`571-272-7822
`
`Paper 27
`Date: April 17, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-004251
`Patent 6,993,658 B1
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, LYNNE H. BROWNE, and
`JASON M. REPKO, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 JPMorgan Chase Bank N.A. was joined as a party to this proceeding via
`Motion for Joinder in IPR2023-01331.
`
`
`
`
`
`IPR2023-00425
`Patent 6,993,658 B1
`
`INTRODUCTION
`I.
`Oral argument for the above-referenced proceeding was heard on
`April 16, 2024. During the presentation of its case in chief, counsel for
`Petitioner referred to a position taken by Patent Owner in its infringement
`contentions in district court litigation.
`II. DISCUSSION
`The infringement contentions referred to by Petitioner are not of
`record in this proceeding. The Board questioned whether this issue was
`properly raised and what, if any weight, the Board should give to the
`referenced infringement contentions. Petitioner asserted that the issue was
`properly raised because it had only recently learned about the infringement
`contentions and was not able to raise the issue prior to oral argument. Patent
`Owner responded that the infringement contentions were publicly available
`and had been available since December, 2023.
`The Board queried the parties as to whether they would like additional
`briefing on this issue. Petitioner did not oppose additional briefing, but
`indicated that it did not think it was necessary. Patent Owner opposed
`additional briefing. We, however, cannot ignore the fact that new evidence
`was introduced during oral argument. For that reason, we require additional
`briefing on two questions: 1) is it too late for Petitioner to file a copy of the
`infringement contentions argued at oral argument; and 2) if the infringement
`contentions are allowed to be entered, what, if any, weight should we give to
`a position taken by Patent Owner in a different, albeit related, proceeding
`(i.e., district court litigation). A copy of the infringement contentions should
`accompany Petitioner’s brief, as an exhibit and for purposes of discussion,
`but will be expunged from the record if the panel deems that no
`
`2
`
`
`
`IPR2023-00425
`Patent 6,993,658 B1
`consideration will be given the infringement contentions. No additional
`evidence or exhibits should accompany the briefs.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that by April 24, 2024, Petitioner shall file its brief
`addressing the questions outlined above, not to exceed 3 pages; and
`FURTHER ORDERED that by May 1, 2024, Patent Owner shall file
`its brief in response to Petitioner’s brief, not to exceed 3 pages.
`
`3
`
`
`
`IPR2023-00425
`Patent 6,993,658 B1
`FOR PETITIONER:
`
`
`Timothy Murphy
`Jordan Rossen
`tj@unifiedpatents.com
`jordan@unifiedpatents.com
`
`How-Ying Liou
`Vishal Khatri
`Matthew Johnson
`Evan Tassis
`JONES DAY
`aliou@jonesday.com
`vkhatri@jonesday.com
`mwjohnson@jonesday.com
`etassis@jonesday.com
`
`FOR PATENT OWNER:
`
`John Wittenzellner
`Todd E. Landis
`Michael J. Fagan, Jr.
`Mark McCarthy
`WILLIAMS SIMONS & LANDIS PLLC
`johnw@wsltrial.com
`tlandis@wsltrial.com
`mfagan@wsltrial.com
`mmccarthy@wsltrial.com
`
`
`4
`
`
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