`571-272-7822
`
`Paper 26
`Date: July 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PLAYTIKA LTD. and PLAYTIKA HOLDING CORP,and
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`NEXRF CORP,
`Patent Owner.
`
`
`
`
`IPR2021-00951 (Patent 8,747,229 B2)
`IPR2021-00953 (Patent 9,646,454 B2)1
`
`
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, FREDERICK C. LANEY, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`TERMINATION
`Dismissal After Institution of Trial
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`
`
`
`1 This Order is entered into each case. The parties are not authorized to use
`this joint heading and filing style in their papers.
`
`
`
`IPR2021-00951, Patent 8,747,229 B2
`IPR2021-00953, Patent 9,646,454 B2
`
`I. INTRODUCTION
`
`NexRF Corp. (“Patent Owner”) is the owner of the U.S. Patents
`
`8,747,229 (“the ’229 patent”) and 9,646,454 (“the ’454 patent”). Playtika
`
`Ltd. and Playtika Holding Corp., filed petitions seeking inter partes review
`
`of and challenging the patentability of claims 1, 6, 7, 9, 14, 15, 17, 22, and
`
`23 of the ’229 patent and claims 1, 3–7, 17, and 26 of the ’454 patent. Paper
`
`1.2 On December 6, 2021, we instituted trial in this proceeding. Paper 14.
`
`On April 25, 2022, petitioner Aristocrat Technologies, Inc. was joined as a
`
`party to these proceedings. Paper 23. Collectively Aristocrat and the
`
`Playtika parties are referred to herein as “Petitioner.”
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(collectively referred to as “the Parties”) filed a Joint Motion to
`
`Terminate the above-identified proceeding “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 [and the ’454 patent] under 35
`
`U.S.C. § 101.” Paper 25 (“Joint Motion”), 1. In support of the Joint
`
`Motion, the Parties filed a copy of a the Federal Circuit’s Rule 36 Judgment
`
`(Ex. 1023) and the Federal Circuit’s Mandate (Ex. 1024).
`
`II. DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter 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 is filed.”
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2021-00951.
`Similar Papers were filed in IPR2021-00953.
`
`
`2
`
`
`
`IPR2021-00951, Patent 8,747,229 B2
`IPR2021-00953, Patent 9,646,454 B2
`
`In the Joint Motion, the Parties represent that “[t]ermination of this
`
`inter partes review is appropriate because the Federal Circuit’s patent
`
`ineligibility decision mooted all unpatentability grounds presented before the
`
`Board. I” Joint Motion 3. The Parties further represent that Patent Owner
`
`“did not request rehearing, and the Federal Circuit issued a formal mandate,
`
`indicating that the judgment is final.” Id.
`
`Although we instituted trial in these proceedings, we have not yet
`
`decided the merits of the proceedings, and a final written decisions have not
`
`been entered. Notwithstanding that the proceedings have moved beyond the
`
`preliminary stage, the Parties have adequately shown that termination of the
`
`proceedings is appropriate. Under these circumstances, we determine that
`
`good cause exists to terminate the proceedings with respect to the Parties.
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motion to Terminate (Paper 25) is granted,
`
`and IPR2021-00951 and IPR2021-00953 are terminated with respect to
`
`Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
`
`§ 42.72.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2021-00951, Patent 8,747,229 B2
`IPR2021-00953, Patent 9,646,454 B2
`
`
`FOR PETITIONER:
`
`Cory Bell
`Gerson Panitch
`Forrest Jones
`Christina Ji-Hye Yang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`cory.bell@finnegan.com
`gerson.panitch@finnegan.com
`forrest.jones@finnegan.com
`christina.yang@finnegan.com
`
`FOR PATENT OWNER:
`
`Eugene LeDonne
`Brian Murphy
`Christopher Gosselin
`Jonahtan Herstoff
`HAUG PARTNERS LLP
`eledonne@haugpartners.com
`bmurphy@haugpartners.com
`cgosselin@haugpartners.com
`jherstoff@flhlaw.com
`
`Adam Yowell
`Alastair Warr
`FISHERBROYLES
`adam.yowell@fisherbroyles.com
`alastair.warr@fisherbroyles.com
`
`4
`
`
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