The detailed information for PTAB case with proceeding number IPR2021-00375 filed by Qualcomm Incorporated et al. against UNM Rainforest Innovations et al. on Dec 28, 2020. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number
IPR2021-00375
Filing Date
Dec 28, 2020
Petitioner
Qualcomm Incorporated et al.
Respondent
UNM Rainforest Innovations et al.
Status
Trial Instituted
Respondent Application Number
12168855
Respondent Tech Center
2400
Respondent Patent Number
8265096
Institution Decision Date
Jul 19, 2021

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

Order: Grant of Good Cause Extension

Jul 25, 2025PAPERBOARD

Exhibit 3100

Jul 2, 2025EXHIBITBOARD

Order Granting Director Review, Vacating in Part Termination Order, and Remanding to the Patent Trial and Appeal Board for Further Proceedings

Jul 2, 2025PAPERBOARD

Termination Decision: Post-DI Settlement

May 14, 2025PAPERBOARD

EXPUNGED

May 14, 2025PAPERBOARD

EXPUNGED

May 14, 2025PAPERBOARD

Request for Director Review - Final Written Decision

Feb 20, 2025PAPERPATENT OWNER

TERMINATION Due to Settlement on Remand 35 U.S.C. 317; 37 C.F.R. 42.74

Jan 24, 2025PAPERBOARD

Corrected Joint Motion to Terminate Inter Partes Review Pursuant to 35 U.S.C. Section 317 and 37 C.F.R. Section 42.74

Jan 17, 2025PAPERPETITIONER

Joint Request to Maintain Confidentiality and to Keep Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)

Dec 31, 2024PAPERPETITIONER

Confidential Settlement Agreement

Dec 31, 2024EXHIBITPETITIONER

Joint Motion to Terminate Inter Partes Review Pursuant to 35 U.S.C. Section 317 and 37 C.F.R. Section 42.74

Dec 31, 2024PAPERPETITIONER

Other: Fed Circuit mandate

Nov 7, 2024PAPERBOARD

Other: other court decision

Nov 7, 2024PAPERBOARD

Patent Owner's Notice of Cross-Appeal

Sep 16, 2022PAPERPATENT OWNER

Petitioner ZyXEL Communication Corp.'s Notice of Appeal

Sep 12, 2022PAPERPETITIONER

Joined Petitioner ZyXEL Communication Corp.'s Notice of Appeal

Sep 12, 2022PAPERPETITIONER

Petitioner_s Fourth Updated Mandatory Notices

Jul 15, 2022PAPERPETITIONER

Final Written Decision: original

Jul 15, 2022PAPERBOARD

Other: Hearing transcript

Jun 15, 2022PAPERBOARD

Sur-Reply in Opposition to Patent Owner's Motion to Amend

Jun 2, 2022PAPERPETITIONER

Reply in Support of Patent Owner's Motion to Amend

May 23, 2022PAPERPATENT OWNER

Ex. 2019 - Redline Version of Reply In Support of Patent Owner's Motion to Amend

May 23, 2022EXHIBITPATENT OWNER

EXPUNGED

May 19, 2022PAPERBOARD

ORDER Expunging Unauthorized Papers, Authorizing Patent Owner to File a Reply to the Opposition to Motion to Amend and Preliminary Guidance, and Authorizing Petitioner to File a Sur-reply to Patent Owners Reply 37 C.F.R. 42.5

May 19, 2022PAPERBOARD

Patent Owner's Reply In Support of Its Motion to Exclude

May 13, 2022PAPERPATENT OWNER

Patent Owner's Updated Power of Attorney

May 11, 2022PAPERPATENT OWNER

Patent Owner's Updated Mandatory Notices

May 11, 2022PAPERPATENT OWNER

ORDER Granting Patent Owners Motions for Pro Hac Vice Admission of Henning Schmidt and Cecil E. Key 37 C.F.R. sec 42.10

May 10, 2022PAPERBOARD

Petitioner_s Oral Argument Demonstratives

May 10, 2022EXHIBITPETITIONER

Patent Owner's Demonstratives

May 10, 2022EXHIBITPATENT OWNER

EXPUNGED

May 9, 2022PAPERPETITIONER

Petitioner_s Opposition to Patent Owner_s Motion to Exclude

May 9, 2022PAPERPETITIONER

Patent Owner's Motion to Exclude

May 4, 2022PAPERPATENT OWNER

Corrected Ex. 2017 - Declaration of Cecil E. Key ISO Mtn for PHV

May 2, 2022EXHIBITPATENT OWNER

EXPUNGED

May 2, 2022PAPERPATENT OWNER

ORDER Modifying Requirements for Filing and Serving Demonstratives

Apr 28, 2022PAPERBOARD

Patent Owner's Motion for Pro Hac Vice Admission of Henning Schmidt

Apr 28, 2022PAPERPATENT OWNER

Patent Owner's Motion for Pro Hac Vice Admission of Cecil E. Key

Apr 28, 2022PAPERPATENT OWNER

Ex. 2016 - Decl of Henning Schmidt ISO Mtn for PHV

Apr 28, 2022EXHIBITPATENT OWNER

Ex. 2017 - Decl of Cecil Key ISO Mtn PHV

Apr 28, 2022EXHIBITPATENT OWNER

Order: ORDER Changing Due Date 8 and Setting Oral Argument 37 C.F.R. §§ 42.5, 42.70

Apr 26, 2022PAPERBOARD

EXPUNGED

Apr 25, 2022PAPERPETITIONER

Order: Setting Oral Argument - 37 CFR 42.70

Apr 20, 2022PAPERBOARD

Order Third Revised Scheduling Order

Apr 14, 2022PAPERBOARD

Patent Owner's Request for Oral Argument

Apr 12, 2022PAPERPATENT OWNER

PETITIONERS REQUEST FOR ORAL ARGUMENT PURSUANT TO 37 C.F.R. § 42.70(a)

Apr 12, 2022PAPERPETITIONER

Patent Owner's Sur-Reply to Petition for Inter Partes Review of U.S. Patent 8,265,096 B2 Claims 1-4 and 6-8

Apr 11, 2022PAPERPATENT OWNER

EXPUNGED

Apr 11, 2022PAPERPATENT OWNER

Notice: PRELIMINARY GUIDANCE PATENT OWNERS MOTION TO AMEND

Mar 29, 2022PAPERBOARD

Petitioner_s Reply to Patent Owner_s Response to Petition

Mar 1, 2022PAPERPETITIONER

Transcript of Remote Deposition of Branimir Vojcic, D.Sc., February 9, 2022

Mar 1, 2022EXHIBITPETITIONER

Supplemental Declaration of Dr. Sumit Roy, Ph.D. in Support of Petitioner_s Response to Patent Owner_s Motion to Amend

Mar 1, 2022EXHIBITPETITIONER

Petitioner_s Opposition to Patent Owner_s Motion to Amend

Mar 1, 2022PAPERPETITIONER

Ex 3001

Feb 23, 2022EXHIBITBOARD

Patent Owner's Motion to Exclude Evidence

Feb 23, 2022PAPERPATENT OWNER

Patent Owner's Motion to Amend

Feb 17, 2022PAPERPATENT OWNER

Patent Owner's Response

Feb 17, 2022PAPERPATENT OWNER

Petitioner's Third Updated Mandatory Notices

Feb 8, 2022PAPERPETITIONER

Petitioners' Notice of Deposition of Dr. Branimir Vojcic

Feb 4, 2022PAPERPETITIONER

Patent Owner's Response to Petitioners' Objections to Evidence (Paper 33)

Dec 30, 2021PAPERPATENT OWNER

Petitioners' Objections to Evidence

Dec 23, 2021PAPERPETITIONER

Patent Owner's Response to Petitioners' Objections to Evidence

Dec 21, 2021PAPERPATENT OWNER

Deposition Transcript of Sumit Roy, Ph.D. dated 12-06-21

Dec 20, 2021EXHIBITPATENT OWNER

EXPUNGED

Dec 16, 2021PAPERPATENT OWNER

Petitioners��� Objections to Evidence

Dec 14, 2021PAPERPETITIONER

Order: Second Revised Scheduling Order

Dec 10, 2021PAPERBOARD

EXPUNGED

Dec 7, 2021PAPERPATENT OWNER

EXPUNGED

Dec 7, 2021PAPERPATENT OWNER

Ex. 2013

Dec 7, 2021EXHIBITPATENT OWNER

Ex. 2014

Dec 7, 2021EXHIBITPATENT OWNER

Patent Owner's Amended Notice of Deposition of Dr. Sumit Roy

Nov 30, 2021PAPERPATENT OWNER

Patent Owner's Notice of Deposition of Dr. Sumit Roy

Nov 23, 2021PAPERPATENT OWNER

ORDER Conduct of the Proceeding 37 C.F.R. sec 42.5

Nov 18, 2021PAPERBOARD

UNM Rainforest Innovations' Response Regarding Patent Ownership and Standing

Nov 1, 2021PAPERPATENT OWNER

Petitioner_s Brief on the Issues of Patent Ownership and Standing

Oct 18, 2021PAPERPETITIONER

ITRI_s Recorded Assignment, Reel/Frame No. 045200/0980

Oct 18, 2021EXHIBITPETITIONER

Sino Matrix_s Recorded Assignment, Reel/Frame No. 021275/0468

Oct 18, 2021EXHIBITPETITIONER

UNM_s Recorded Assignment, Reel/Frame No. 046854/0173

Oct 18, 2021EXHIBITPETITIONER

June 22, 2021 hearing transcript before Judge Albright in UNM_s litigations against Dell and ASUSTek

Oct 18, 2021EXHIBITPETITIONER

Printout from Public PAIR showing the correspondence address of record for the _096 patent

Oct 18, 2021EXHIBITPETITIONER

Excerpt of ���096 file history showing ITRI���s prosecution counsel

Oct 18, 2021EXHIBITPETITIONER

Other: Revised Scheduling Order

Oct 15, 2021PAPERBOARD

Other: Granting Petitioner's Motions for Admission Pro Hac Vice

Oct 15, 2021PAPERBOARD

Order: ORDER Conduct of the Proceeding 37 C.F.R. § 42.5

Oct 4, 2021PAPERBOARD

Institution decision and grant of joinder, IPR2021-00734

Oct 1, 2021PAPERBOARD

Petitioner���s Motion for Pro Hac Vice Admission of Jonah D. Mitchell Pursuant to 37 C.F.R. �� 42.10(C)

Sep 27, 2021PAPERPETITIONER

Declaration of Jonah D. Mitchell in support of Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R. �� 42.10(C)

Sep 27, 2021EXHIBITPETITIONER

Petitioner_s Motion for Pro Hac Vice Admission of Christine M. Morgan Pursuant to 37 C.F.R. section 42.10(C)

Sep 27, 2021PAPERPETITIONER

Declaration of Christine M. Morgan in Support of Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R. section 42.10(C)

Sep 27, 2021EXHIBITPETITIONER

Trial Instituted Document

Jul 19, 2021PAPERBOARD

Scheduling Order

Jul 19, 2021PAPERBOARD

Petitioner���s Second Updated Mandatory Notices

Jun 25, 2021PAPERPETITIONER

Surreply in Support of Patent Owner's Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 8,265,096 B2

Jun 1, 2021PAPERPATENT OWNER

Petitioner_s Reply To Patent Owner_s Preliminary Response

May 25, 2021PAPERPETITIONER

Petitioner_s Updated Mandatory Notices

May 25, 2021PAPERPETITIONER

ORDER Conduct of the Proceeding

May 19, 2021PAPERBOARD

Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 8,265,096 B2 Claims 1-4 and 6-8

Apr 21, 2021PAPERPATENT OWNER

Ex. 2001

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2002

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2003

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2004

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2005

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2006

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2007

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2008

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2009

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2010

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2011

Apr 21, 2021EXHIBITPATENT OWNER

Ex. 2012

Apr 21, 2021EXHIBITPATENT OWNER

Patent Owner's Mandatory Notices

Apr 9, 2021PAPERPATENT OWNER

Patent Owner's Power of Attorney

Apr 9, 2021PAPERPATENT OWNER

Notice of Accord Filing Date

Jan 21, 2021PAPERBOARD

Petitioner's Amended Certificate of Service Under 37 C.F.R. sections 42.6(e) and 42.105

Dec 29, 2020PAPERPETITIONER

Exhibit 1005 - Excerpts from Jeffrey G. Andrews et al, Fundamentals of WiMAX

Dec 28, 2020EXHIBITPETITIONER

Petition for Inter Partes Review of U.S. Patent No. 8,265,096 B2

Dec 28, 2020PAPERPETITIONER

Petitioner Qualcomm Incorporated Power of Attorney

Dec 28, 2020PAPERPETITIONER

Exhibit 1001 - Zheng, US 8,265,096 B2

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1003 - IPR2019-01393

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1004 - Eleventh Supplemental Order Regarding Court Operations Under the Exigent Circumstances Created by the Covid-19 Pandemic

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1007 - IEEE 802.16m System Requirements

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1009 - U.S. Provisional App. No. 60/929,798

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1010 - Excerpts from _096 Patent File History

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1011 - Claim Construction Order in STC.UNM v Apple Inc., No. 1-20-cv-00351, W.D. Tex. Apr. 9, 2020

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1012 - U.S. Pub. No. 2009/0067377 A1 (Talukdar)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1006 - Five Criteria Statement for P802.16m PAR Proposal

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1008 - U.S. Patent No. 8,265,096: Challenged Claims

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1014 - Canadian Patent Application No. 2 581 166 A1 (Wang)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1019 - Excerpts from William Stallings, WIRELESS COMMUNICATIONS AND NETWORKS (2D ED. 2005)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1027 - Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile Systems (IEEE, Vol. 4, No. 2, Mar. 2005)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1028 - Declaration of Dr. Robert Akl

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1029 - Scott McKeown, District Court Trial Dates Tend to Slip After PTAB Discretionary Denials, Patents Post Grant

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1013 - U.S. Provisional Application No. 60/56,031 (Talukdar Provisional)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1015 - WIPO Handbook on Industrial Property Information and Documentation, _Examples and Kinds of Patent Documents_ (May 2016)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1016 - U.S. Pub. No. 2007/0155387 A1 (Li)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1017 - U.S. Pub. No. 2007/0104174 A1 (Nystrom)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1018 - U.S. Pub. No. 2008/0095195 (Ahmadi)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1020 - U.S. Patent No. 7,460,466 B2 (Lee)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1021 - U.S. Patent No. 8,462,611 B2 (Ma)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1022 - Fixed, nomadic, portable and mobile applications for 802.16-2004 and 802.16e WiMAX networks (November 2005)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1023 - Mohammad Azizul Hasan, Performance Evaluation of WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1024 - U.S. Patent No. 7,710,910 B2 (Ode)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1025 - IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4 (Jan. 12, 2007)

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1026 - U.S. Pub. No. 2004/0037215 A1 (Hwang

Dec 28, 2020EXHIBITPETITIONER

Exhibit 1002 - Declaration of Dr. Sumit Roy, Ph.D.

Dec 28, 2020EXHIBITPETITIONER

Petitioner's Motion for Joinder Under 35 U.S.C. section 315(c), 37 C.F.R. section 42.22, and 42.122(b)

Dec 28, 2020PAPERPETITIONER