The detailed information for PTAB case with proceeding number IPR2019-01119 filed by Iconex LLC against MAXStick Products Ltd. et al. on May 22, 2019. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number
IPR2019-01119
Filing Date
May 22, 2019
Petitioner
Iconex LLC
Respondent
MAXStick Products Ltd. et al.
Status
Terminated-Settled
Respondent Application Number
11798975
Respondent Tech Center
1700
Respondent Patent Number
8445104
Institution Decision Date
Dec 6, 2019
Termination Date
May 19, 2020

Proceeding Documents

The table below shows documents filed in the case, listing each document name, filing date, document type, and filing party. Tracking these filings indicates the activity of the parties involved in the case, and the types of documents filed can provide insights into the legal strategies being employed.


Document NameFiling DateCategoryFiling Party

Alert me when new update on this case

Termination Due to Settlement After Institution of Trial

May 19, 2020PAPERBOARD

Joint Motion to Terminate Pursuant to 35 U.S.C. Section 317 and 37 C.F.R. Section 42.7

May 18, 2020PAPERPETITIONER

Settlement Agreement

May 18, 2020EXHIBITPETITIONER

Joint Request to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. Section 317(B) and 37 C.F.R. Section 42.74(C)

May 18, 2020PAPERPETITIONER

Petitioner's Objections to Patent Owner's Evidence

Apr 8, 2020PAPERPETITIONER

Petitioner's Objections to Patent Owner's Evidence

Mar 18, 2020PAPERPETITIONER

Patent Owner Response

Mar 11, 2020PAPERPATENT OWNER

Third Declaration of Michael Vigunas

Mar 11, 2020EXHIBITPATENT OWNER

Second Declaration of William Krahl

Mar 11, 2020EXHIBITPATENT OWNER

Article from NRF Stores News entitled ¿¿¿Sweet Innovations¿¿¿ regarding Friendly¿¿¿s Express¿¿¿ use of MAXSTick liner-free labels, dated April 21, 2011

Mar 11, 2020EXHIBITPATENT OWNER

Press release from Epson regarding Friendly¿¿¿s Express use of Epson TM-T88 and MAXStick liner-free labels

Mar 11, 2020EXHIBITPATENT OWNER

Letter from Kevin Brown, President of BayScan Technologies regarding MAXStick¿¿¿s product line

Mar 11, 2020EXHIBITPATENT OWNER

2074- Part 1 - Transcript of Deposition of Dr. Anthony McHugh, dated February 6, 2020

Mar 11, 2020EXHIBITPATENT OWNER

2074 - Part 2 - Transcript of Deposition of Dr. Anthony McHugh, dated February 6, 2020

Mar 11, 2020EXHIBITPATENT OWNER

McHugh Exhibit 4 ¿¿¿ European Patent Application Publication No. EP1053289 to Wenzel et al. (¿¿¿Wenzel¿¿¿)

Mar 11, 2020EXHIBITPATENT OWNER

Press release from Epson regarding Epson TM-T88 and use of MAXStick products at Friendly¿¿¿s Express restaurants, dated January 2011

Mar 11, 2020EXHIBITPATENT OWNER

Press release from Epson regarding BayScan Technologies use of Epson TM-T88 and MAXStick products, dated October 26, 2010

Mar 11, 2020EXHIBITPATENT OWNER

Press release from Epson regarding Epson¿¿¿s TM-T88IV and MAXStick products, dated April 17, 2008

Mar 11, 2020EXHIBITPATENT OWNER

Article from QSR Magazine entitled ¿¿¿The Results of the 2007 QSR Customer Drive-Thru Preference Survey¿¿¿ dated October 2007

Mar 11, 2020EXHIBITPATENT OWNER

Press release from Epson, regarding Epson¿¿¿s TM-T88IV and MAXStick labels, dated May 5, 2008

Mar 11, 2020EXHIBITPATENT OWNER

Declaration of Robert Iezzi, Ph.D.

Mar 11, 2020EXHIBITPATENT OWNER

U.S. Patent Application Publication No. 2012/0263881

Mar 11, 2020EXHIBITPATENT OWNER

U.S. Patent No. 5,492,599, to Olson et al.

Mar 11, 2020EXHIBITPATENT OWNER

Order Denying Patent Owner's Motion for Additional Discovery

Feb 25, 2020PAPERBOARD

U.S. Patent No. 8,537,184

Jan 24, 2020EXHIBITPETITIONER

Petitioner's Opposition to Patent Owner's Motion for Additional Discovery

Jan 24, 2020PAPERPETITIONER

Redacted Notice of Subpoena to H.B. Fuller - 11-19-19

Jan 24, 2020EXHIBITPETITIONER

Petitioner's Objections to Patent Owner's Evidence

Jan 24, 2020PAPERPETITIONER

MaxStick's Revised Rule 30(b)(6) Notice of Deposition - 1-16-2020

Jan 24, 2020EXHIBITPETITIONER

Patent Owner's Motion for Leave to Take Additional Discovery

Jan 17, 2020PAPERPATENT OWNER

Prosecution History of U.S. Patent No. 9,208,699

Jan 17, 2020EXHIBITPATENT OWNER

Second Declaration of Michael Vigunas

Jan 17, 2020EXHIBITPATENT OWNER

Handwritten notes of Michael Vigunas

Jan 17, 2020EXHIBITPATENT OWNER

Email from Mike Vigunas Jerry Bulter with the subject RE: NCR/MAXStick Samples dated April 25, 2011

Jan 17, 2020EXHIBITPATENT OWNER

Document filed by NCR / Iconex in District of Delaware litigation against Documotion Research Inc. (DI 135)

Jan 17, 2020EXHIBITPATENT OWNER

Email from Mike Vigunas Jerry Bulter with the subject MAXStick MNDA dated April 11, 2011

Jan 17, 2020EXHIBITPATENT OWNER

Handwritten notes of Michael Vigunas dated May 2011

Jan 17, 2020EXHIBITPATENT OWNER

LinkedIn profile page of Mark Keeton

Jan 17, 2020EXHIBITPATENT OWNER

Proposed document requests

Jan 17, 2020EXHIBITPATENT OWNER

Document dated April 18, 2011

Jan 17, 2020EXHIBITPATENT OWNER

Email from James Muldoon to Christopher Murphy et al. with the subject RE: Failure to Respond to Subpoena in Max Int¿¿¿l Converters Inc. et al. v. Iconex dated November 7, 2019

Jan 17, 2020EXHIBITPATENT OWNER

Letter from Richard A. Weiss to Michael Vigunas dated July 24, 2014

Jan 17, 2020EXHIBITPATENT OWNER

Excerpts of document filed in District of Delaware litigation, NCR / Iconex against Documotion Research Inc. (DI 7)

Jan 17, 2020EXHIBITPATENT OWNER

U.S. Patent No. 7,820,264 (¿¿¿the Iconex ¿¿¿264 patent¿¿¿)

Jan 17, 2020EXHIBITPATENT OWNER

U.S. Patent No. 8,711,190 (¿¿¿the Iconex ¿¿¿190 patent¿¿¿)

Jan 17, 2020EXHIBITPATENT OWNER

Excerpts of pretrial order filed in District of Delaware litigation, NCR / Iconex against Documotion Research Inc. (DI 131)

Jan 17, 2020EXHIBITPATENT OWNER

U.S. Patent No. 9,646,517 (¿¿¿the ¿¿¿517 patent¿¿¿)

Jan 17, 2020EXHIBITPATENT OWNER

U.S. Patent No. 9,208,699 (¿¿¿the ¿¿¿699 patent¿¿¿)

Jan 17, 2020EXHIBITPATENT OWNER

Order - Conduct of the Proceeding - 37 CFR 42.5

Jan 10, 2020PAPERBOARD

Joint Notice of Stipulation to Modify Due Dates 1-3

Jan 3, 2020PAPERPATENT OWNER

Trial Instituted Document

Dec 6, 2019PAPERBOARD

SCHEDULING ORDER

Dec 6, 2019PAPERBOARD

Motion to Correct Clerical Errors Under 37 C.F.R. Section 42.104(c)

Oct 3, 2019PAPERPETITIONER

Declaration of Thomas Downs

Sep 11, 2019EXHIBITPATENT OWNER

Declaration of William Krahl

Sep 11, 2019EXHIBITPATENT OWNER

Patent Owner Preliminary Response

Sep 11, 2019PAPERPATENT OWNER

Declaration of Michael Vigunas

Sep 11, 2019EXHIBITPATENT OWNER

Photograph of label product with adhesive patches

Sep 11, 2019EXHIBITPATENT OWNER

Photograph of Epson TM-L90 printer

Sep 11, 2019EXHIBITPATENT OWNER

Photograph of Epson TM88 printer

Sep 11, 2019EXHIBITPATENT OWNER

Comparison of the prior art index mark label media and MAXStick Products

Sep 11, 2019EXHIBITPATENT OWNER

Presentation entitled ¿¿¿Epson Transaction Printers¿¿¿ dated October 2009

Sep 11, 2019EXHIBITPATENT OWNER

Presentation entitled ¿¿¿TM-88IV ReStick Label & Receipt Printer¿¿¿ dated February 2009

Sep 11, 2019EXHIBITPATENT OWNER

Presentation entitled ¿¿¿The World¿¿¿s First ¿¿¿Removable and Repositionable¿¿¿ Liner-Free Label¿¿¿

Sep 11, 2019EXHIBITPATENT OWNER

Presentation entitled ¿¿¿Liner Free Adhesive¿¿¿ dated November 19, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Memorandum entitled ¿¿¿Summary of Max International Meetings on 2/19/08¿¿¿ dated February 22, 2008

Sep 11, 2019EXHIBITPATENT OWNER

Email from Kevin Brown to Mike Vigunas with the subject RE: MAXStick Patent Testimonial dated February 1, 2013

Sep 11, 2019EXHIBITPATENT OWNER

TransAct component specification for Roll-Variable Thermal Paper ¿¿4.00x3.13 W, Rev C

Sep 11, 2019EXHIBITPATENT OWNER

Press release from OKI Data Americas dated May 7, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Letter from Barry Jones of Merley Paper Converters Limited, dated February 11, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding HP-500, dated October 5, 2016

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Epson TM-188, dated June 30, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Star Micronics SM-L300, dated June 15, 2017

Sep 11, 2019EXHIBITPATENT OWNER

Document entitled Epson Labeling Solutions

Sep 11, 2019EXHIBITPATENT OWNER

U.S. Patent No. 7,588,811, to Blank et al. (¿¿¿Blank¿¿¿)

Sep 11, 2019EXHIBITPATENT OWNER

Photograph of POS system

Sep 11, 2019EXHIBITPATENT OWNER

Article from Adhesive and Sealing Industry Magazine entitled ¿¿¿Managing the Concerns of BPA¿¿¿ dated February 1, 2009

Sep 11, 2019EXHIBITPATENT OWNER

White paper entitled ¿¿¿Liner-free Thermal Labels ¿¿¿ A technology seeking a solution¿¿¿

Sep 11, 2019EXHIBITPATENT OWNER

Email from Mark Siedschlag to Mike Vigunas and Robert Green with the subject RE: MAXStick dated October 22, 2007

Sep 11, 2019EXHIBITPATENT OWNER

Article from www.BSMinfo.com entitled ¿¿¿Solutions Provider Reaps Profits From Customized Label Solution¿¿¿ by Cindy Dubin dated September 2012

Sep 11, 2019EXHIBITPATENT OWNER

Press release from Axiohm, dated December 10, 2008

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Bixolon SPP-R200II, dated July 28, 2014

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Cubinote, dated June 22, 2018

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Star Micronics TSP650, dated June 2008

Sep 11, 2019EXHIBITPATENT OWNER

Email from Amy Caldeira to Bill Krahl with the subject FW: URGENT!!!! FORMAL APPROVAL RECEIVED FROM SEC FOR RESTICK PROJECT dated April 4, 2008

Sep 11, 2019EXHIBITPATENT OWNER

Development and Supply Agreement, dated May 15, 2009

Sep 11, 2019EXHIBITPATENT OWNER

Draft press release from Epson regarding TM-T88IV, dated April 7, 2008

Sep 11, 2019EXHIBITPATENT OWNER

NETS Products Group advertisement entitled ¿¿¿Made To Order¿¿¿ Made To Stick¿¿¿¿¿¿

Sep 11, 2019EXHIBITPATENT OWNER

Letter from Samer Khashan, President of Team One Repair, Inc. with the subject ¿¿¿Re: Maxstick International Products,¿¿¿ dated February 15, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Letter from Andreas Eissing of McDonald¿¿¿s Germany Inc. to Mike Vigunas, dated April 10, 2013

Sep 11, 2019EXHIBITPATENT OWNER

U.S. Published Patent Application No. 2014/0148542

Sep 11, 2019EXHIBITPATENT OWNER

Press release from Epson regarding TM-L90, dated October 3, 2016

Sep 11, 2019EXHIBITPATENT OWNER

Press release from MAXStick regarding Martel Instruments LLP1800, dated May 23, 2014

Sep 11, 2019EXHIBITPATENT OWNER

Letter from Thomas Niedzwiecki of NETS Products Group LLC, dated February 18, 2013

Sep 11, 2019EXHIBITPATENT OWNER

Exhibit A to Motion - Protective Order (Clean)

Sep 11, 2019EXHIBITPATENT OWNER

Exhibit B - Protective Order (Redline Version)

Sep 11, 2019EXHIBITPATENT OWNER

Patent Owner's Combined Motion for Entry of Stipulated Protective Order and Motion to Seal

Sep 11, 2019PAPERPATENT OWNER

STATEMENT UNDER 37 CFR 3.73(c)

Jun 12, 2019PAPERPATENT OWNER

PATENT OWNER¿¿¿S NOTICES UNDER 37 C.F.R. ¿¿ 42.8

Jun 12, 2019PAPERPATENT OWNER

Notice of Accord Filing Date

Jun 11, 2019PAPERBOARD

Petition for Inter Partes Review

May 22, 2019PAPERPETITIONER

Prosecution History of the 104 patent

May 22, 2019EXHIBITPETITIONER

U.S. Patent Application Publication No. 2004/0250947 to Phillips et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,840,657 to Mehta et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 3,051,588 to Lavanchy

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 8,445,104

May 22, 2019EXHIBITPETITIONER

Declaration of Dr. Anthony McHugh

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 6,432,528 to Faust et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,354,588 to Mitchell et al.

May 22, 2019EXHIBITPETITIONER

Certified English Translation of German Patent No. DE20216483 U1 to ATB System Etiketten GmbH

May 22, 2019EXHIBITPETITIONER

WIPO Patent Application Publication No. WO 98/14377 to Pusateri et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent Application No. 2005/0208250 to Blank et al.

May 22, 2019EXHIBITPETITIONER

Complaint filed in MAX International Converters, Inc. et al. v. Iconex LLC, No. 1-18-cv-01412-MN D. Del. Sept. 12, 2018

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 6,099,943 to Moeller et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,945,468 to Atkinson et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,661,099 to Mitchell Jr.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,292,713 to Stenzel et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 4,870,047 to Glanz et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,656,705 to Mallya et al.

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 6,830,795 to Downs

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 6,129,965 to Langan

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 6,268,032 to Mertens et al.

May 22, 2019EXHIBITPETITIONER

Certified English Translation of German Patent No. DE20217070 U1 to ATB System Etiketten GmbH

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,194,329 to Hsieh et al.

May 22, 2019EXHIBITPETITIONER

Certifications for Translations of Exhibits

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 3,691,140 to Silver

May 22, 2019EXHIBITPETITIONER

U.S. Patent No. 5,314,929 to Crivello et al.

May 22, 2019EXHIBITPETITIONER

not used

May 22, 2019EXHIBITPETITIONER

German Patent No. DE20216483 U1 to ATB System Etiketten GmbH

May 22, 2019EXHIBITPETITIONER

German Patent No. DE20217070 U1 to ATB System Etiketten GmbH

May 22, 2019EXHIBITPETITIONER

Power of Attorney

May 22, 2019PAPERPETITIONER