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Esdec, Inc. et al. vs Unirac, Inc.

The detailed information for PTAB case with proceeding number IPR2021-01566 filed by Esdec, Inc. et al. against Unirac, Inc. on Sep 30, 2021. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number: IPR2021-01566
Filing Date: Sep 30, 2021
Petitioner: Esdec, Inc. et al.
Respondent: Unirac, Inc.
Status: Terminated-Settled
Respondent Application Number: 12848716
Respondent Tech Center: 3600
Respondent Patent Number: 8128044
Institution Decision Date: Apr 5, 2022
Termination Date: Jul 28, 2022

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.

Show Exhibit Documents

Document Name	Filing Date	Category	Filing Party
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Termination Decision: Due to Settlement After Institution of Trial 35 U.S.C. sec. 317; 37 C.F.R. sec. 42.74	Jul 28, 2022	PAPER	BOARD
Joint Motion to Terminate Inter Partes Review of U.S. Patent 8,128,044	Jul 19, 2022	PAPER	PETITIONER
Joint Motion to Keep Confidential and Separate	Jul 19, 2022	PAPER	PETITIONER
Confidential Settlement Agreement	Jul 19, 2022	EXHIBIT	PETITIONER
Patent Owners Response	Jun 27, 2022	PAPER	PATENT OWNER
5-23-2022 Email from P. Woo	May 27, 2022	EXHIBIT	BOARD
Order: Granting Withdrawal of Rehearing Request	May 27, 2022	PAPER	BOARD
Ex. 3003 POP Withdrawal Request	May 24, 2022	EXHIBIT	BOARD
Notice: Notification Of Withdrawal Of Pop Request	May 24, 2022	PAPER	BOARD
Ex. 3002 Request for POP	May 9, 2022	EXHIBIT	BOARD
Notice: notice of receipt of POP request	May 9, 2022	PAPER	BOARD
Patent Owners Motion for Rehearing	May 4, 2022	PAPER	PATENT OWNER
EX2018 Stipulation and Order To Extend Time EcoFasten Case	May 4, 2022	EXHIBIT	PATENT OWNER
EX2019 Email exchange	May 4, 2022	EXHIBIT	PATENT OWNER
Granting Institution of Inter Partes Review 35 U.S.C. § 314	Apr 5, 2022	PAPER	BOARD
SCHEDULING ORDER	Apr 5, 2022	PAPER	BOARD
Exhibit 3001	Apr 5, 2022	EXHIBIT	BOARD
Patent Owners Preliminary Sur-Reply	Mar 15, 2022	PAPER	PATENT OWNER
Petitioners�� Authorized Preliminary Reply to Patent Owner��s Preliminary Response	Mar 8, 2022	PAPER	PETITIONER
Exhibit 1017 - Petitioners Stipulation of Invalidity Defenses	Mar 8, 2022	EXHIBIT	PETITIONER
Order: Granting Motion for Pro Hac Vice Admission of Brian A. Biggs	Mar 4, 2022	PAPER	BOARD
Motion for Pro Hac Vice Admission - Brian A. Biggs	Mar 2, 2022	PAPER	PETITIONER
Exhibit 1016 - Declaration of Brian A. Biggs in Support of Motion for Pro Hac Vice Admission	Mar 2, 2022	EXHIBIT	PETITIONER
Petitioners Updated Exhibit List	Mar 2, 2022	PAPER	PETITIONER
Unirac Inc. Preliminary Response to Petition	Jan 6, 2022	PAPER	PATENT OWNER
2001 U.S. Pat. No. 7,434,362	Jan 6, 2022	EXHIBIT	PATENT OWNER
2002 U.S. Pat. No. 7,260,918	Jan 6, 2022	EXHIBIT	PATENT OWNER
2003 U.S. Pat. No. 7,766,292	Jan 6, 2022	EXHIBIT	PATENT OWNER
2004 Prosecution History of the 362 Patent	Jan 6, 2022	EXHIBIT	PATENT OWNER
2005 Prosecution History of the 918 Patent	Jan 6, 2022	EXHIBIT	PATENT OWNER
2006 Prosecution History of the 292 Patent	Jan 6, 2022	EXHIBIT	PATENT OWNER
2007 Amended Complaint for Unirac, Inc. v. IronRidge, Inc. et al., Case No. 121cv00616 filed July 2, 2021, in United States District Court for the District of New Mexico the IronRidge II Case DI 31	Jan 6, 2022	EXHIBIT	PATENT OWNER
2008 U.S. Patent No. 5,571,338	Jan 6, 2022	EXHIBIT	PATENT OWNER
2009 Order Granting in Part the Motion to Stay in Quickmount Case DI 62	Jan 6, 2022	EXHIBIT	PATENT OWNER
2010 Scheduling Order in EcoFasten Case DI 20	Jan 6, 2022	EXHIBIT	PATENT OWNER
2011 Order Resetting Scheduling Order Deadlines in EcoFasten Case DI 28	Jan 6, 2022	EXHIBIT	PATENT OWNER
2012 Order granting Stipulation to Extend Time in EcoFasten Case DI 51	Jan 6, 2022	EXHIBIT	PATENT OWNER
2013 Scheduling Order in Quickmount Case DI 33	Jan 6, 2022	EXHIBIT	PATENT OWNER
2014 Defendants Local Rule 3 3 and 3 4 Disclosures in Quickmount Case excerpted and redacted	Jan 6, 2022	EXHIBIT	PATENT OWNER
2015 Defendants Initial Invalidity Contentions in EcoFasten Case excerpted and redacted	Jan 6, 2022	EXHIBIT	PATENT OWNER
2016 Joint Claim Construction and Prehearing Statement in Quickmount Case DI 38	Jan 6, 2022	EXHIBIT	PATENT OWNER
2017 Revised Joint Claim Construction Statement in EcoFasten Case DI 52	Jan 6, 2022	EXHIBIT	PATENT OWNER
Patent Owners Mandatory Notices	Nov 19, 2021	PAPER	PATENT OWNER
Patent Owners Power of Attorney	Nov 19, 2021	PAPER	PATENT OWNER
Notice: Notice filing date accorded	Oct 8, 2021	PAPER	BOARD
U.S. Patent No. 8,128,044	Sep 30, 2021	EXHIBIT	PETITIONER
Prosecution History of the 044 Patent	Sep 30, 2021	EXHIBIT	PETITIONER
PTAB Appeal 95001,706, Jac-Rack, Inc. v. Unirac, Inc.	Sep 30, 2021	EXHIBIT	PETITIONER
Japanese Patent Publication No. 11-013238 (Masami)	Sep 30, 2021	EXHIBIT	PETITIONER
Certified Translation of Japanese Patent Publication No. 11-013238 (Masami)	Sep 30, 2021	EXHIBIT	PETITIONER
Japanese Patent Publication No. 09-250219 (Nobuyuki)	Sep 30, 2021	EXHIBIT	PETITIONER
Certified Translation of Japanese Patent Publication No. 09-250219 (Nobuyuki)	Sep 30, 2021	EXHIBIT	PETITIONER
Japanese Patent Publication No. JPH 10-122125A (Hideyuki)	Sep 30, 2021	EXHIBIT	PETITIONER
Certified Translation of Japanese Patent Publication No. JPH 10-122125A (Hideyuki)	Sep 30, 2021	EXHIBIT	PETITIONER
German Patent Publication No. DE29616947U1 (Donauer)	Sep 30, 2021	EXHIBIT	PETITIONER
Certified Translation of German Patent Publication No. DE29616947U1 (Donauer)	Sep 30, 2021	EXHIBIT	PETITIONER
US Patent No. 6,360,491 to Ullman	Sep 30, 2021	EXHIBIT	PETITIONER
Claim Listing USP 8,128,044	Sep 30, 2021	EXHIBIT	PETITIONER
Claim Comparison 362 and 044	Sep 30, 2021	EXHIBIT	PETITIONER
Declaration of Edward C. Kern, Jr., Ph.D.	Sep 30, 2021	EXHIBIT	PETITIONER
Petition for Inter Partes Review	Sep 30, 2021	PAPER	PETITIONER
Power of Attorney - EcoFasten Solar, LLC	Sep 30, 2021	PAPER	PETITIONER
Power of Attorney - Esdec, Inc. and Wencon Development, Inc. d/b/a Quickmount PV Corporation	Sep 30, 2021	PAPER	PETITIONER