Case: 1:22-cv-01213 Document #: 33 Filed: 03/10/23 Page 1 of 3 PageID #:165

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

FINTECH INNOVATIONS ASSOCIATES

LLC, Case No. 1:22-cv-1213

Plaintiff,
Judge Edmond E. Chang
v.

SAMSUNG ELECTRONICS CO., LTD.,

AND SAMSUNG ELECTRONICS
AMERICA INC.,

Defendants.

DEFENDANTS’ STATUS REPORT

On February 23, 2023, this Court entered a text docket entry stating:

MINUTE entry before the Honorable Edmond E. Chang: No licensed

attorney has filed an appearance for the Plaintiff. If no attorney appears for
the Plaintiff by 03/10/2023, then the case will be dismissed for lack of
prosecution. The parties also shall file a status report by 03/10/2023, and
the Defendant shall file the report if no attorney has appeared for the
Plaintiff. The tracking status hearing of 02/24/2023 is reset to 03/17/2023
at 8:30 a.m., but to track the case only (no appearance is required, the case
will not be called). Emailed notice (mw, ).

ECF 32. Pursuant to the Court’s Order (ECF 32), Defendants Samsung Electronics Co., Ltd.,

and Samsung Electronics America Inc. (“Defendants”) submit this Status Report to advise the

Court as follows:

No attorney appearance

1. Since February 23, 2023, no licensed attorney has filed an appearance for Plaintiff

Fintech Innovations Associates LLC (“Plaintiff”).

 Case: 1:22-cv-01213 Document #: 33 Filed: 03/10/23 Page 2 of 3 PageID #:166

2. Since February 23, 2023, no licensed attorney has contacted Defendants’ counsel

purporting to represent Plaintiff in this Action.

Patent-in-suit cancelled

3. On February 17, 2023, the United States Patent and Trademark Office issued a

Judgement in Post Grant Review proceeding PGR2022-00046 cancelling the patent-in-suit, U.S.

Design Patent No. 945,453. The Judgment is attached hereto as Exhibit A.

4. Defendants are filing this status report separately from Plaintiff because no attorney

has filed an appearance for Plaintiff.

Dated: March 10, 2023 Respectfully submitted,

/s/ Sherry L. Rollo

Steven E. Feldman
Sherry L. Rollo
Hahn Loeser & Parks LLP
200 West Madison Street, Suite 2700
Chicago, Illinois 60606

Neil P. Sirota
Baker Botts L.L.P.
30 Rockefeller Plaza, 45th Floor
New York, New York 10112

Caroline Duncan
Baker Botts L.L.P.
2001 Ross Ave. Suite 900
Dallas, Texas 75201

Attorneys for Defendants

Samsung Electronics Co., Ltd. and Samsung
Electronics America, Inc.
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CERTIFICATE OF SERVICE

I hereby certify that on March 10, 2023, the foregoing was served upon Fintech Innovations

Associates LLC by mailing it to Fintech Innovations Associates LLC’s last known address through

USPS Certified Mail. I hereby certify that service has been made of all documents required to be

served by Fed.R.Civ.P.5(a) in a manner authorized by Fed.R.Civ.P.5(b) and (c). Service was made

upon:

Fintech Innovations Associates, LLC

22 N. Broad St., Suite 3a
Middletown, DE 19709

Fintech Innovations Associates, LLC

121 Lenora LN
Downington, PA 19335

/s/Sherry L. Rollo
Sherry L. Rollo
Case: 1:22-cv-01213 Document #: 33-1 Filed: 03/10/23 Page 1 of 6 PageID #:168

EXHIBIT A
Case: 1:22-cv-01213 Document #: 33-1 Filed: 03/10/23 Page 2 of 6 PageID #:169

Trials@uspto.gov Paper 18
571-272-7822 Entered: February 17, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_____________
EARLY WARNING SERVICES, LLC,
Petitioner,
v.
FINTECH INNOVATION ASSOCIATES LLC,
Patent Owner.
_____________

PGR2022-00046
Patent D945,453 S
____________

Before KEN B. BARRETT, BART A. GERSTENBLITH, and

ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

JUDGMENT
Granting Request for Adverse Judgment After
Institution of Trial
37 C.F.R. § 42.73(b)
Case: 1:22-cv-01213 Document #: 33-1 Filed: 03/10/23 Page 3 of 6 PageID #:170

PGR2022-00046
Patent D945,453 S

On February 6, 2023, Early Warning Services, LLC (“Petitioner”)

sought leave to file a motion for adverse judgment against Patent Owner.
Ex. 3005. Petitioner states that, on February 2, 2023, Fintech Innovation
Associates LLC (“Patent Owner”) paid the requisite fee for a statutory
disclaimer Patent Owner filed on October 10, 2022. Id.; see also Ex. 3002
(statutory disclaimer), Ex. 3006 (electronic patent application fee
transmittal). As discussed below, the statutory disclaimer (Ex. 3002)
disclaims the sole claim of U.S. Patent No. D945,453 S (“the ’453 patent”)
(Ex. 1001).
Because a statutory disclaimer of the sole claim in a proceeding is
construed as a request by a patent owner for adverse judgment against itself
pursuant to 37 C.F.R. § 42.73(b), we determine that there is no need for a
motion for adverse judgment, and, therefore, we deny Petitioner’s request
for leave to file a motion. Additionally, for the same reasons, we enter
adverse judgment against Patent Owner.
BACKGROUND
On October 10, 2022, Patent Owner filed a statutory disclaimer
disclaiming the claim of the ’453 patent. Ex. 3002. The statutory disclaimer
was not accompanied by the required fee, as we noted in an Order issued on
November 15, 2022. Paper 13 at 4. See also 37 C.F.R. § 1.321(a) (“The
disclaimer, to be recorded in the Patent and Trademark Office, must: . . . .
(4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d).”).
On January 5, 2023, the Board instituted post grant review of the
claim of the ’453 patent. Paper 16.
As noted above, Petitioner, by email, requests leave to file a motion
for adverse judgment against Patent Owner based on the statutory

2
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PGR2022-00046
Patent D945,453 S

disclaimer. Ex. 3005. Petitioner informs the Board that on February 2,

2023, Patent Owner paid the fee for filing a statutory disclaimer, and
Petitioner states that “the entire scope of the ‘453 patent has now been
properly disclaimed.” Exs. 3005, 3006. On February 6, 2023, Patent Owner
responded to Petitioner’s email with the following statement: “Patent owner
FIA supports.” Ex. 3005.
DISCUSSION
A party may request judgment against itself at any time during a
proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry
of adverse judgment include “[c]ancellation or disclaimer of a claim such
that the party has no remaining claim in the trial.” Id.
A disclaimer is “considered as part of the original patent” as of the
date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a
disclaimer to be “recorded” in the Office, the document filed by the patent
owner must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term
being disclaimed. A disclaimer which is not a disclaimer of a
complete claim or claims, or term will be refused recordation;

(3) State the present extent of patentee’s ownership interest in

the patent; and
(4) Be accompanied by the fee set forth in [37 C.F.R.]
§ 1.20(d).

37 C.F.R. § 1.321(a). “[N]othing in the statutes or regulations requires any

action by the [Patent Office] for a disclaimer to be ‘recorded.’” Vectra
Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998).

3
Case: 1:22-cv-01213 Document #: 33-1 Filed: 03/10/23 Page 5 of 6 PageID #:172

PGR2022-00046
Patent D945,453 S

We have reviewed Patent Owner’s signed disclaimer (Ex. 3002), the

electronic patent application fee transmittal submitted on February 2, 2023
(Ex. 3006), and the Office’s public records. Patent Owner’s payment of the
requisite fee in order to perfect the disclaimer is confirmation that Patent
Owner desires to disclaim the sole claim involved in this proceeding. We
conclude that a disclaimer of the claim of the ’453 patent pursuant to
35 U.S.C. § 253(a) has been recorded in the Office as of February 2, 2023.
Accordingly, we construe this disclaimer as a request for adverse
judgment, and we enter judgment against Patent Owner with respect to the
claim of the ’453 patent.
ORDER
It is
ORDERED that adverse judgment is entered under 37 C.F.R.
§ 42.73(b) against Patent Owner and the challenged claim of the ’453 patent
is cancelled.

4
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PGR2022-00046
Patent D945,453 S

For PETITIONER:

Justin Krieger
Darin Gibby
Michael Bertelson
KILPATRICK TOWNSEND & STOCKTON LLP
jkrieger@kilpatricktownsend.com
dgibby@kilpatricktownsend.com
mbertelson@kilpatricktownsend.com

For PATENT OWNER:

Official USPTO Correspondence Information for Patent D945,453 S:

The STR3EM Team

2885 Sanford Ave SW #13208
Grandville, MI 49418

sc2cd@yahoo.com
sa.cs2cd@gmail.com
bally5@aol.com

Correspondence Addresses Used by Principals of Patent Owner in this

Proceeding:

William Grecia
sa.cs2cd@gmail.com

Lizette Grecia, Grecia Family Estate

business@greciafamily.estate