`571-272-7822
`
`
`
`
` Paper 9
`Date: April 21, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CELLPAK, INC.,
`Petitioner,
`
`v.
`
`MAMBATE USA INC.,
`Patent Owner.
`
`
`IPR2021-00007
`Patent D846,728 S
`
`
`
`Before GRACE KARAFFA OBERMANN, LYNNE E. PETTIGREW, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Petitioner, Cellpak, Inc., filed a Petition for inter partes review of the
`design claim in U.S. Patent No. D846,728 S (Ex. 1001, “the ’728 patent”) on
`October 1, 2020. Paper 1. Patent Owner, Mambate USA Inc., did not file
`mandatory notices as required by 37 C.F.R. § 42.8 and did not file a
`
`
`
`IPR2021-00007
`Patent D846,728 S
`
`Preliminary Response. On April 21, 2021, pursuant to 35 U.S.C. § 314(a),
`we instituted an inter partes review of the ’728 patent after determining that
`the information presented in the Petition shows a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of the challenged
`claim. Paper 7.
`On March 23, 2021, we entered an Order to Show Cause as to why
`adverse judgment should not be entered against Patent Owner in view of its
`failure to file mandatory notices, which include identification of counsel and
`service information. Paper 4 (“Order”); see 37 C.F.R. § 42.8(b)(3),(4). As
`explained in the Order, we held a conference call to discuss the issue.
`Order 2. Mr. Michael Chen represented Petitioner on the call. Id.
`Mr. Steven W. Weinrieb, whose law office is listed in USPTO records as the
`correspondence address of record for the ’728 patent, participated in the call
`but stated he was not authorized to speak on behalf of Patent Owner for
`purposes of the call or to represent Patent Owner in this proceeding. Id.
`Mr. Weinrieb also stated he had forwarded all correspondence regarding this
`inter partes review to Patent Owner. Id. No counsel appeared on the call
`for Patent Owner. Id.
`We entered the Order to Show Cause following the conference call.
`The Order explained that under 37 C.F.R. § 42.73(b), “[a] party may request
`adverse judgment against itself at any time during a proceeding,” and
`“[a]ctions construed to be a request for adverse judgment include . . .
`[a]bandonment of the contest.” Id. The Order also explained that failure to
`participate in a proceeding, such as failure to file mandatory notices as
`required under 37 C.F.R. § 42.8, may be considered abandonment of the
`contest and therefore result in adverse judgment under 37 C.F.R. § 42.73(b).
`
`2
`
`
`
`IPR2021-00007
`Patent D846,728 S
`
`Id. The Order gave Patent Owner ten calendar days to show cause why
`adverse judgment should not be entered against it. Id. at 3.
`The time for responding to the Order to Show Cause has elapsed, and
`Patent Owner has not filed a response. Nor has Patent Owner filed
`mandatory notices. We now have instituted an inter partes review of the
`’728 patent. In the interests of justice, and to facilitate a fair and equitable
`result in this proceeding, we hereby provide Patent Owner a final
`opportunity to file the required mandatory notices.1 The time for filing those
`notices is within 30 calendar days of this Order. We place Patent Owner on
`express notice that, in the event Patent Owner does not file mandatory
`notices within 30 calendar days from entry of this Order, we will determine
`that Patent Owner has abandoned the contest, and we will construe Patent
`Owner’s abandonment of the contest as a request for adverse judgment in
`this proceeding under 37 C.F.R. § 42.73(b)(4).2
`
`Accordingly, it is:
`ORDERED that Patent Owner is directed to file the required
`mandatory notices within 30 calendar days of this Order; and
`
`
`1 Instead of granting adverse judgment prior to determining whether to
`institute as initially set forth in our Order to Show Cause, we elected to
`review the Petition on the merits and give Patent Owner this final
`opportunity to appear.
`2 Petitioner filed a motion for entry of adverse judgment (Paper 5)
`accompanied by a proposed order (Paper 6). Petitioner did not seek prior
`authorization from the Board before filing the motion as required by our
`rules. See 37 C.F.R. § 42.20(b) (“A motion will not be entered without
`Board authorization.”). Accordingly, Papers 5 and 6 will be expunged from
`the record.
`
`3
`
`
`
`IPR2021-00007
`Patent D846,728 S
`
`
`FURTHER ORDERED that failure to file the required mandatory
`notices pursuant to 37 C.F.R. § 42.8 within 30 calendar days of this Order
`will result in entry of adverse judgment against Patent Owner under 37
`C.F.R. § 42.73(b) with respect to the claim of U.S. Patent No. D846,728 S.
`
`
`
`
`
`
`PETITIONER:
`
`Che-Yang Chen
`LAW OFFICE OF MICHAEL CHEN
`chen.patentlaw@gmail.com
`
`Gary F. Wang
`LAW OFFICES OF GARY F. WANG
`garywang@gfwanglaw.com
`
`
`PATENT OWNER (has not made an appearance):
`
`Steven W. Weinrieb
`LAW OFFICES OF STEVEN W. WEINRIEB
`sweinrieb@gmail.com
`
`
`4
`
`
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