Ivanti, Inc.

Patent Trials and Appeals Board

Feb 4, 2021

IPR2021-00022 (P.T.A.B. Feb. 4, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: February 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

STAYLINKED CORPORATION,
Petitioner,
v.
IVANTI, INC.,
Patent Owner.

IPR2021-00022
Patent 9,648,083 B2

Before SALLY C. MEDLEY, NORMAN H. BEAMER,
and AARON W. MOORE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.

DECISION
Dismissal Prior to Institution of Trial
35 U.S.C. § 314

IPR2021-00022
Patent 9,648,083 B2
2

On January 28, 2021, with Board authorization, Petitioner filed an
“Unopposed Motion to Dismiss Without Prejudice The Petition” in this
proceeding. Paper 9 (“Mot.”). In the motion, Petitioner represents that Patent
Owner does not oppose the motion. Mot. 2.
The Petition in this proceeding was filed on October 5, 2020. Paper 8.
Patent Owner’s Preliminary Response would be due February 6, 2021, and the
Board’s decision on institution would be due three months after the Patent
Owner’s Preliminary Response deadline or the date when it is filed. 35 U.S.C.
§ 314. The Board has not yet considered the merits of the Petition.
In the motion, Petitioner states that dismissal is justified because this
proceeding is in its early stages. Mot. 3. Petitioner explains that it is
“evaluating whether to file a subsequent petition challenging [the patent]
based on some or all of the prior art and grounds asserted in the Petition but
with additional evidence and/or grounds.” Id. at 3–4.
Under 37 C.F.R. § 42.71(a), “[t]he Board may take up petitions or
motions for decisions in any order, [and] may grant, deny, or dismiss any
petition or motion.” This proceeding is at an early stage, and few resources
have been expended by the Board in this proceeding. Under these
circumstances, we are persuaded that it is appropriate to dismiss the Petition
and terminate the proceeding to promote efficiency and minimize unnecessary
costs.
This paper does not constitute a final written decision pursuant to 35
U.S.C. § 318(a) or a judgment pursuant to 37 C.F.R. § 42.73. We note that
Petitioner states that its Motion “is contingent upon dismissal without
prejudice,” and “requests that dismissal of the Petition be without prejudice to
the Board’s authority to exercise its discretion in determining whether to
institute an inter partes review on any subsequently filed petition.” Mot. 2, 4.
IPR2021-00022
Patent 9,648,083 B2
3

However, during a February 4, 2021 conference call with the parties, it was
explained that “dismissals without prejudice” are not in accord with Board
practice, and counsel for Petitioner withdrew that contingency.
Accordingly, it is:
ORDERED that Petitioner’s Motion to Dismiss IPR2021-00022 as
modified by Petitioner during the February 4, 2021 conference call is granted;
and
FURTHER ORDERED that the petition in IPR2021-00022 is dismissed
and the proceeding in IPR2021-00022 is terminated.

IPR2021-00022
Patent 9,648,083 B2
4

PETITIONER:
Adam K. Richards
Thomas Hardman
RAY QUINNEY & NEBEKER P.C.
arichards@rqn.com
thardman@rqn.com
PATENT OWNER:
Parrish Freeman
Eric Maschoff
MASCHOFF BRENNAN PLLC
pfreeman@mabr.com
emaschoff@mabr.com