`Case 1:19—cv-00859—RTH Document 6-3 Filed 08/02/19 Page 1 of 5
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`EXHIBIT C
`EXHIBIT C
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`Case 1:19-cv-00859-RTH Document 6-3 Filed 08/02/19 Page 2 of 5
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`Trials@uspto.gov
`571-272-7822
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` Paper 17
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` Entered: July 25, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`Petitioner,
`v.
`E-NUMERATE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-01389 (Patent 9,268,748)
` IPR2018-01391 (Patent 9,262,383)
` IPR2018-01392 (Patent 8,185,816)
` IPR2018-01394 (Patent 7,650,355)1
`
`
`
`
`Before SALLY C. MEDLEY, KEN B. BARRETT, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
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`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
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`1 This Order addresses issues that are identical in all four proceedings.
`We exercise our discretion to issue one Order to be filed in each proceeding.
`
`
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`Case 1:19-cv-00859-RTH Document 6-3 Filed 08/02/19 Page 3 of 5
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`IPR2018-01389 (Patent 9,268,748); IPR2018-01391 (Patent 9,262,383)
`IPR2018-01392 (Patent 8,185,816); IPR2018-01394 (Patent 7,650,355)
`
`
`We instituted the above-identified inter partes reviews (“IPRs”) on
`February 13, 2019. Paper 12.2 After institution, Patent Owner filed its
`Responses on May 6, 2019. Paper 14. However, Petitioner has not yet filed
`its Replies. And we have not held an Oral Hearing, nor have we entered a
`Final Written Decision in these IPRs.
`On July 24, 2019, Petitioner contacted the Board, via email, to request
`“permission to file motions to withdraw from IPRs 2018-01389/91/92/94.”
`Ex. 3001, 1−2. Patent Owner indicated in its email that it does not oppose
`Petitioner’s request to withdraw, and that these instituted IPRs “should be
`terminated.” Id. at 1. Upon consideration, we granted Petitioner’s request,
`authorizing Petitioner to file a motion to withdraw in each of the IPRs. Id.
`Subsequently, Petitioner filed unopposed Motions to Withdraw its
`participation in these IPRs. Paper 16 (“Mot.”).3 In its Motions, Petitioner
`indicates that the related district court litigation has been dismissed. Mot. 1.
`Petitioner also requests to withdraw its counsel from the IPRs, but does not
`provide any replacement counsel. Id.
`In light of the particular facts before us, we find Petitioner’s actions
`amount to an abandonment of the contest. Under 37 C.F.R. § 42.73(b)(4),
`
`
`2 All citations are to IPR2018-01389, as representative, unless otherwise
`noted.
`3 For the purposes of expediency, we cite to the Motion filed in
`Case IPR2018-01389. Similar Motions, were filed in Cases IPR2018-01391
`(Paper 16), IPR2018-01392 (Paper 16), and IPR2018-01394 (Paper 15).
`
`
`2
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`Case 1:19-cv-00859-RTH Document 6-3 Filed 08/02/19 Page 4 of 5
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`IPR2018-01389 (Patent 9,268,748); IPR2018-01391 (Patent 9,262,383)
`IPR2018-01392 (Patent 8,185,816); IPR2018-01394 (Patent 7,650,355)
`
`an abandonment of the contest is construed to be a request for adverse
`judgment. In view of the foregoing, we grant the request for adverse
`judgment in each of the above-identified proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s unopposed Motions to Withdraw, which
`are construed as requests for adverse judgment under 37 C.F.R.
`§ 42.73(b)(4), are granted; and
`FURTHER ORDERED that the above-identified IPR proceedings are
`terminated.
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`3
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`Case 1:19-cv-00859-RTH Document 6-3 Filed 08/02/19 Page 5 of 5
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`IPR2018-01389 (Patent 9,268,748); IPR2018-01391 (Patent 9,262,383)
`IPR2018-01392 (Patent 8,185,816); IPR2018-01394 (Patent 7,650,355)
`
`For PETITIONER:
`
`Katherine Rahlin
`FREDRIKSON & BYRON, P.A.
`krahlin@fredlaw.com
`
`For PATENT OWNER:
`
`Gregory Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`George Gordon
`andrew@agordonlaw.com
`
`
`
`
`
`4
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`
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