throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: May 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RICOH AMERICAS CORP.,
`Petitioner,
`
`v.
`
`ROUND ROCK RESEARCH LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00635 (Patent 6,147,405)
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00640 (Patent 6,358,801)
`IPR2016-00641 (Patent 5,986,347)1
`____________
`
`Before GRACE KARAFFA OBERMANN, SUSAN L. C. MITCHELL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses issues common to all five proceedings; therefore, we
`issue a single order to be entered in each case. The parties are authorized to
`use this style heading when filing an identical paper in the proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`

`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`
`
`A conference call was held on May 24, 2016, among respective
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`counsel for Petitioner and Patent Owner, and Judges Obermann, Mitchell,
`
`and Ankenbrand. The parties jointly requested the call to discuss: (1) Patent
`
`Owner’s request to file a motion to extend the filing date of its Preliminary
`
`Response in all five inter partes review proceedings (“IPR proceedings”);
`
`and (2) Petitioner’s request to file a motion for a corrected certificate of
`
`service in certain of the IPR proceedings.
`
`
`
`During the call, Patent Owner represented that the parties are engaged
`
`in settlement negotiations with respect to the IPR proceedings and the
`
`concurrently pending district court litigation. Patent Owner further
`
`represented that the parties anticipate filing joint motions to terminate the
`
`IPR proceedings upon finalizing a settlement agreement. Patent Owner
`
`indicated that the Preliminary Responses would be unnecessary if the parties
`
`settle the IPR proceedings and requested a three-week extension, to June 20,
`
`2016, to file each Preliminary Response.
`
`Petitioner agreed with Patent Owner’s representations regarding the
`
`status of the parties’ settlement negotiations. Petitioner stated that it would
`
`not oppose extending the filing dates of Patent Owner’s Preliminary
`
`Responses.
`
`Although Patent Owner requested authorization to file a motion to
`
`extend the filing date of each Preliminary Response, we treated that request
`
`as an oral motion to extend the filing dates and explained that Patent Owner
`
`should not file a motion with the Board. Turning to the merits of the motion,
`
`and mindful of our duty to secure “the just, speedy, and inexpensive
`
`resolution of every proceeding,” 37 C.F.R. § 42.1(b), we explained that a
`
`
`
`2
`
`

`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`three-week extension was not warranted. Based on the representations made
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`during the conference call, however, we determined that Patent Owner
`
`articulated good cause to extend the filing date of each Preliminary
`
`Response to June 14, 2016. See 37 C.F.R. § 42.5(c)(2). Counsel for both
`
`parties stated that this shorter extension would meet their needs.
`
`
`
`As to the second issue discussed, counsel for Petitioner explained that
`
`the certificates of service (“Certificates”) filed in certain of the IPR
`
`proceedings included an error: the Certificates state that service was made
`
`by Express Mail on February 18, 2016, when, in fact, service was made by
`
`Federal Express on February 19, 2016. Petitioner requested authorization to
`
`file a motion to correct the Certificates to include the proper service method
`
`and date. Counsel for Patent Owner stated that it did not oppose the request
`
`for authorization and would not oppose a motion to correct.
`
`
`
`We treated Petitioner’s request as an oral motion to file the corrected
`
`Certificates and explained that Petitioner should not file a motion with the
`
`Board. Based on the representations made during the conference call, we
`
`ordered Petitioner to file the corrected Certificates within three business
`
`days of the date of this Order.
`
`It is, therefore,
`
`ORDERED that the filing date for Patent Owner’s Preliminary
`
`
`
`
`
`Response in each of IPR2016-00635, IPR2016-00637, IPR2016-00639,
`
`IPR2016-00640, and IPR2016-00641 is extended to June 14, 2016; and
`
`
`
`3
`
`

`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`FURTHER ORDERED that Petitioner shall file a corrected certificate
`
`of service in each of the applicable IPR proceedings within three business
`
`days of the date of this Order.
`
`
`
`4
`
`

`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`FOR PETITIONER:
`
`Theodore Mlynar
`Ted.mlynar@hoganlovells.com
`
`Ira Schaefer
`Ira.schaefer@hoganlovells.com
`
`Gary Serbin
`Gary.serbin@hoganlovells.com
`
`Helen Trac
`Helen.trac@hoganlovells.com
`
`Eric Lobenfeld
`Eric.lobenfeld@hoganlovells.com
`
`Takayuki Yasaku
`Takayuki.yasaku-law.com
`
`FOR PATENT OWNER:
`
`Richard Botos
`rbotos@lernerdavid.com
`
`Neill Taylor
`ntaylor@roundrockresearch.com
`
`
`
`
`5

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