`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Playtika Ltd., Playtika Holding Corp., and Aristocrat Technologies, Inc.,
`
`Petitioners,
`
`v.
`
`NEXRF Corp.,
`
`The Patent Owner.
`____________________
`
`Case No. IPR2021-009511
`U.S. Patent No. 8,747,229
`
`
`JOINT MOTION TO TERMINATE TRIAL
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`
`
`1 Aristocrat Technologies, Inc. was joined as a party to this proceeding via
`Motion for Joinder in IPR2022-00408.
`
`
`
`Exhibit
`Ex-1001
`Ex-1002
`Ex-1003
`Ex-1004
`Ex-1005
`Ex-1006
`Ex-1007
`Ex-1008
`Ex-1009
`Ex-1010
`
`Ex-1011
`
`Ex-1012
`Ex-1013
`
`Ex-1014
`Ex-1015
`
`Ex-1016
`
`Ex-1017
`Ex-1018
`Ex-1019
`Ex-1020
`Ex-1021
`Ex-1022
`Ex-1023
`Ex-1024
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`LIST OF EXHIBITS
`Description
`U.S. Patent No. 8,747,229 (the ’229 patent)
`Prosecution File History of U.S. Patent No. 8,747,229
`Declaration of Stacy A. Friedman
`Curriculum Vitae of Stacy A. Friedman
`U.S. Patent No. 7,470,196 B1 (“Joshi”)
`European Patent Application No. EP 0 934 765 A1 (“Agasse”)
`U.S. Patent No. 5,918,013 (“Mighdoll”)
`Reserved
`Australian Patent No. 721645 (“Finlayson”)
`David Ohlson, Lasseters On-Line, “Internet Gambling” (May 6-7,
`1999).
`Access Systems PTY Ltd., Submission to The Productivity
`Commission Inquiry into Australia’s Gambling Industries (Oct.
`1998).
`U.S. Patent No. 6,874,084 (“Dobner”).
`John R. Smith et al., Content-Based Transcoding of Images in the
`Internet (1998).
`Reserved
`Complained Filed in NEXRF Corp. v. Playtika Ltd., Case No. 3:20-
`cv-604-MMD-CLB (D. Nev.)
`Henrik Frystyk Nielson, et al., Network Performance Effects of
`HTTP/1.1, CSS1, and PNG, note 24-June 1997 (“Neilson”).
`U.S. Patent No. 6,409,602 (“Wiltshire”)
`As-filed Application of U.S. Patent Application No. 09/688,501
`E-mail Correspondence
`Playtika’s Motion to Dismiss Filed on Feb. 18, 2021
`Reserved
`NEXRF’s Notice of Appeal
`Federal Circuit’s Rule 36 Judgment
`Federal Circuit’s Mandate
`
`
`
`ii
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`I.
`
`INTRODUCTION
`Petitioners Playtika Ltd. and Playtika Holding Corp. (“Playtika”), and
`
`Aristocrat Technologies, Inc. (collectively, “Petitioners”), and Patent Owner
`
`NEXRF Corp. (“NEXRF” or “Patent Owner”) jointly request the Board to
`
`terminate trial in this inter partes review in light of the Federal Circuit’s Rule 36
`
`judgment affirming the Nevada District Court’s decision, which invalidated all
`
`claims of the ’229 patent under 35 U.S.C. § 101. All unpatentability grounds
`
`presented before the Board are now moot in view of the Federal Circuit’s issuance
`
`of a formal mandate, and NEXRF’s representation that it will not request review
`
`by the Supreme Court.
`
`II. BACKGROUND FACTS
`A timeline of events regarding the ’229 patent is provided below.
`
`1. February 18, 2021: In a district court proceeding, Playtika filed a motion
`
`to dismiss NEXRF’s complaint, arguing inter alia that the ’229 patent is
`
`patent ineligible under 35 U.S.C. § 101. Ex-1020.
`
`2. May 26, 2021: Playtika filed a petition for inter partes review of the ’229
`
`patent.
`
`3. July 7, 2021: The district court granted Playtika’s motion to dismiss,
`
`holding that all asserted patents, including the ’229 patent, are patent
`
`ineligible under § 101. Ex-2006.
`
`1
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`4. July 13, 2021: NEXRF appealed the district court’s judgment to the
`
`Federal Circuit. Ex-1022.
`
`5. December 6, 2021: The Board instituted the inter partes review of the
`
`’229 patent, IPR2021-00951. See Paper 14.
`
`6. January 6, 2022: Aristocrat Technologies, Inc. filed IPR2022-00408
`
`challenging the ’229 patent on the same grounds, using the same prior art
`
`and evidence. IPR2022-00408 has been joined to this proceeding. Paper
`
`23.
`
`7. May 13, 2022: The Federal Circuit issued a Rule 36 judgment, affirming
`
`the district court’s determination that the ’229 patent is patent-ineligible
`
`under § 101. Ex-1023.
`
`8. June 21, 2022: The Federal Circuit issued a formal mandate, indicating
`
`that its Rule 36 judgment is final. Ex-1024.
`
`NEXRF’s deadline to appeal the Federal Circuit’s Rule 36 judgment to the
`
`Supreme Court is August 11, 2022, but NEXRF has represented that it will not
`
`request review by the Supreme Court.
`
`III. ARGUMENTS
`An inter partes review proceeding “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination
`
`2
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`is filed.” 35 U.S.C. § 317(a). The Board has broad authority to dismiss the Petition
`
`and terminate an inter partes review proceeding in all appropriate circumstances.
`
`See 37 C.F.R. § 42.72 (“[t]he Board may terminate a trial without rendering a final
`
`written decision, where appropriate, including where the trial is consolidated with
`
`another proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or
`
`327(a).”); see Facebook, Inc. v. EveryMD.com LLC, IPR2017-02027, Paper 24 at 5
`
`(P.T.A.B. Oct. 9, 2018).
`
`Termination of this inter partes review is appropriate because the Federal
`
`Circuit’s patent ineligibility decision mooted all unpatentability grounds presented
`
`before the Board. In a parallel proceeding, the district court held, and the Federal
`
`Circuit affirmed through a Rule 36 judgment, that all claims of the ’229 patent are
`
`patent ineligible under § 101. See Ex-2006, Ex-1023. NEXRF did not request
`
`rehearing, and the Federal Circuit issued a formal mandate, indicating that the
`
`judgment is final. See Ex-1024. NEXRF’s counsel subsequently represented, and
`
`hereby confirms, that it will not appeal the Federal Circuit’s decision to the
`
`Supreme Court. Thus, the Federal Circuit’s Rule 36 affirmance is the final
`
`determination of the invalidity of the ’229 patent, which is not subject to any
`
`further review. Under these circumstances, it would be wasteful for the Board to
`
`continue to adjudicate unpatentability of the ’229 patent in this proceeding.
`
`Termination is also consistent with the Board’s practice. See e.g., Facebook,
`
`3
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`IPR2017-02027, Paper 24 at 6 (vacating the institution decision, dismissing the
`
`petition, and terminating trial for an inter partes review in light of the Federal
`
`Circuit’s Rule 36 judgment affirming the district court’s patent-ineligibility ruling
`
`under § 101).
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioners and Patent Owner jointly and
`
`respectfully request the Board to terminate trial in this inter partes review.
`
`
`
`Date: July 13, 2022
`
`
`
`Respectfully Submitted,
`
`
`By: /Cory Bell/
`Cory Bell (Reg. No. 75,096)
`Lead Counsel for Petitioners Playtika, Ltd.
`and Playtika Holding Corp.
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`Two Seaport Lane Boston, MA 02210-2001
`Tel:
`(617) 646-1641
`Fax: (617) 646-1666
`
`Gerson Panitch (Reg. No. 33,751)
`Forrest Jones (Reg. No. 74,123)
`Christina Ji-Hye Yang (Reg. No. 79,103)
`Backup Counsel for Petitioners Playtika,
`Ltd. and Playtika Holding Corp.
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`901 New York Avenue NW, Washington,
`DC 20001-4413
`Tel:
`(202) 408-4000
`Fax: (202) 408-4400
`
`4
`
`
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`Email: Playtika-IPR@finnegan.com
`
`
`By: /David Garr/
`David Garr (Reg. No. 74,932)
`Counsel for Petitioner Aristocrat
`Technologies, Inc.
`
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`Tel: (202) 662-6000
`Fax: (202) 662-6291
`Aristocrat-NexRF-IPR@cov.com
`
`
`By: /Eugene LeDonne/
`Eugene LeDonne (Reg. No. 35,930)
`Lead Counsel for Patent Owner
`
`Brian Murphy (Reg. No. 34,986)
`Jonathan Herstoff (Reg. No. 64,847)
`Christopher Gosselin (pro hac vice
`requested)
`Backup Counsel for Patent Owner
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: ipr.NEXRF@haugpartners.com
`
`
`
`
`
`5
`
`
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing Joint Motion to
`
`Terminate Trial Pursuant to 35 U.S.C. § 317(a) and Exhibits 1023-1024 were
`
`served electronically via email on July 13, 2022, in their entirety on the following:
`
`Eugene LeDonne
`Brian Murphy
`Jonathan Herstoff
`Christopher Gosselin
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Eledonne@haugpartners.com
`BMurphy@haugpartners.com
`JHerstoff@haugpartners.com
`cgosselin@haugpartners.com
`ipr.NEXRF@haugpartners.com
`
`
`
`
`Date: July 13, 2022
`
`David A. Garr
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`dgarr@cov.com
`Aristocrat-NexRF-IPR@cov.com
`
`Peter P. Chen
`COVINGTON & BURLING LLP
`3000 El Camino Real
`5 Palo Alto Square, 10th Floor
`Palo Alto, CA 94306
`pchen@cov.com
`
`By: /William Esper/
`William Esper
`Case Manager and PTAB Coordinator
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
