Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 13
` Entered: June 14, 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.”
`
`

`
`IPR2016-00637 (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)
`
`On May 25, 2016, we entered an Order extending the filing date for
`
`Patent Owner’s Preliminary Response in each of the above-referenced
`proceedings to June 14, 2016. Paper 8 (“CP Order”), 2–3. On June 13,
`2016, counsel for Patent Owner sent an email communication to the Board,
`on behalf of both parties, seeking an additional two-week extension of the
`filing deadline for Patent Owner’s Preliminary Response in each of the
`above referenced cases, given the “imminent settlement of the litigation
`underlying the . . . IPR[] [proceedings].” Attachment 1 (copy of email
`requesting extension to June 28, 2016). In the email communication,
`counsel for Patent Owner states that Patent Owner has signed the settlement
`agreement, but that, “due to the process by which signatures on such
`agreements are obtained by Japanese companies,” counter signatures by
`Petitioner “will take another two weeks.” Id.
`As explained in our previous Order extending the deadline to file each
`preliminary response, we are “mindful of our duty to secure ‘the just,
`speedy, and inexpensive resolution of every proceeding.’” Conduct of
`Proceeding Order, 2 (quoting 37 C.F.R. § 42.1(b)). Given the facts and
`circumstances of this case, including the representations in the email
`communication regarding the status of the settlement agreement and the
`signature process, we are persuaded that good cause exists to extend the
`filing date of each Preliminary Response to June 28, 2016. See 37 C.F.R.
`§ 42.5(c)(2). We will not entertain any further requests to extend the due
`date of Patent Owner’s Preliminary Responses. We also note that the filing
`of a preliminary response is optional and that Patent Owner may waive such
`a filing. 37 C.F.R. § 42.107.
`
`
`
`2
`
`

`
`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)
`
`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 28, 2016; and
`
`FURTHER ORDERED that the Board will not entertain any further
`requests to extend the due date of Patent Owner’s Preliminary Responses.
`
`
`
`3
`
`

`
`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@yasaku-law.com
`
`FOR PATENT OWNER:
`
`Richard Botos
`rbotos@lernerdavid.com
`
`Neill Taylor
`ntaylor@roundrockresearch.com
`
`
`
`
`4
`
`

`
`From: Botos, Richard J [mailto:rbotos@lernerdavid.com]
`Sent: Monday, June 13, 2016 12:24 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Ted.mlynar@hoganlovells.com; ira.schaefer@hoganlovells.com; Apicella, Laura
`<lapicella@lernerdavid.com>; West, Maralyn <mwest@lernerdavid.com>; K. McNeill Taylor Jr.
`(ntaylor@roundrockresearch.com) <ntaylor@roundrockresearch.com>
`Subject: Re: IPR2016-00635 IPR2016-00637 IPR2016-00639 IPR2016-00640 IPR2016-00641
`
`Re: IPR2016-00635
` IPR2016-00637
` IPR2016-00639
` IPR2016-00640
` IPR2016-00641
`
`Dear Sirs:
`
`Due to the imminent settlement of the litigation underlying the above-referenced IPRs, the Patent Trial
`and Appeal Board previously extended the time for filing Patent Owner’s Preliminary Responses to June
`14, 2016. Patent Owner Round Rock Research has signed the Settlement Agreement, which has been
`approved pending signature by Petitioner Ricoh.
`
`However, due to the process by which signatures on such agreements are obtained by Japanese
`companies, counter signatures by Petitioner on the underlying Settlement Agreement will take another
`two weeks. Attorneys for Patent Owner and Petitioner respectfully request that the Patent Trial and
`Appeal Board defer any action on the above IPRs until the fully signed Settlement Agreement is obtained
`and the joint motions to terminate the above IPRs are filed.
`
`Representatives for Petitioner and Patent Owner further respectfully request that the time for Patent
`Owner to file the Preliminary Responses be extended to June 28th to preserve the current status of the
`IPRs until the joint motions to terminate them are filed with the Patent Trial and Appeal Board.
`
`Respectfully submitted,
`
`
`
`
`
`Respectfully submitted,
`
`Richard J. Botos
`Attorney for Patent Owner Round Rock Research
`rbotos@lernerdavid.com
`Direct Dial: (908) 518-6392
`Main: (908) 584-5000
`
`LernerDavid
`Lerner David Littenberg Krumholz & Mentlik LLP
`600 South Avenue West, Westfield, NJ 07090
`
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