IPR2016-01404
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
`
`U.S. Patent 6,968,459
`IPR2016-01404
`__________________________
`
`
`MOTION TO EXCUSE LATE FILING OF
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.5(C)(3)
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
`
`U.S. Patent 6,968,459
`IPR2016-01404
`__________________________
`
`
`MOTION TO EXCUSE LATE FILING OF
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.5(C)(3)
`
`
`
`
`
`
`IPR2016-01404
`
`I.
`
`INTRODUCTION
`
`
`
`
`Petitioner requests that the Board excuse Petitioner’s one-day-late Request
`
`for Rehearing (Paper 35) (“Request”) under 37 C.F.R. § 42.5(c)(3). Both good
`
`cause and the interests of justice support this action because: (1) Petitioner timely
`
`served its Request, (2) Petitioner attempted to timely file its Request but could not
`
`due to technical difficulties, and (3) Petitioner filed its Request the next day after
`
`the technical difficulties were resolved.
`
`II.
`
`FACTS
`1.
`
`Petitioner’s Request was due February 9, 2018—30 days after the
`
`Final Written Decision (Paper 34) was filed on January 10, 2018.
`
`2.
`
`On February 9, 2018, Petitioner attempted to file its Request using the
`
`Patent Trial and Appeal Board End to End system (“E2E”) but was unsuccessful
`
`because neither Jonathan Stroud nor Roshan Mansinghani—both employees of
`
`Petitioner that are backup counsel of record in this proceeding—had filing
`
`privileges. Neither of them knew, at that time, that they did not have filing
`
`privileges.
`
`3.
`
`Upon realizing the error on Friday, February 9, 2018, Jonathan Stroud
`
`attempted to contact, via e-mail and telephone, James Stein and Lionel Lavenue—
`
`Petitioner’s outside counsel in this proceeding that had sole filing privileges.
`
`1
`
`
`
`
`IPR2016-01404
`
`Neither was able to be reached prior to midnight. At that time, Mr. Stein was in
`
`the hospital with his wife, who was in labor.1
`
`4.
`
`Mr. Stroud then e-mailed PTABE2EAdmin@uspto.gov. He also
`
`called and left a message with the Board’s public number at (571) 272-7822.
`
`5.
`
`On February 9, 2018, Mr. Stroud served its Request on Patent Owner
`
`and the Board at trials@uspto.gov.
`
`6.
`
`The following day, February 10, 2018, Mr. Stein and Mr. Lavenue
`
`communicated with Mr. Stroud and filed the Request in E2E.
`
`III. ANALYSIS
`Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a showing
`
`of good cause or upon a Board decision that consideration on the merits would be
`
`in the interests of justice.” Under these facts, Petitioner’s late action should be
`
`excused. Valeo North America, Inc. & Valeo Embrayages v. Schaeffler
`
`Technologies AG & Co. KG, IPR2016-00502, Paper 46 (Aug. 7, 2017) (order
`
`excusing a seven-day-late filing of a rehearing request of a final written decision).
`
`Regarding the “good cause” prong, Petitioner took proper steps to timely file
`
`the Request, including timely accessing E2E and serving Patent Owner and the
`
`Board. Petitioner’s only misstep was a misunderstanding of which of its counsel
`
`had “primary back-up” filing privileges in E2E. Further, when notified of this
`
`
`1 The healthy child was born on February 9, 2017.
`2
`
`
`
`
`IPR2016-01404
`
`misstep, Petitioner attempted to remediate immediately, but was unable to do so, in
`
`part due to the extenuating circumstances of the counsel who had filing privileges.
`
`Patent Owner suffered no prejudice because: (1) they and the Board were timely
`
`served with the Request; and (2) Petitioner’s Request necessitates no action or
`
`response by Patent Owner. Entry of the Request simply places it into a status for
`
`consideration by the panel—a status that the Request now also would have, were it
`
`to actually have been filed on February 9, 2018. Notably, the Request was actually
`
`filed on February 10, 2018 (a Saturday). Thus, neither Patent Owner nor the Board
`
`suffered any prejudice by the one-day-late filing.
`
`Excusing the delay and considering the merits of Petitioner’s Request is in
`
`the interests of justice. Parties have an opportunity to “specifically identify all
`
`matters the party believes the Board misapprehended or overlooked” in a final
`
`decision. 37 C.F.R. § 42.71(d). “This opportunity helps to ensure that we have
`
`properly considered and understood the law and underlying facts as they relate to
`
`the decision and reached a just decision.” Valeo North America, Inc. & Valeo
`
`Embrayages v. Schaeffler Technologies AG & Co. KG, IPR2016-00502, Paper 46,
`
`at 3 (Aug. 7, 2017). Moreover, as discussed above, no one has suffered prejudice
`
`as a result of the late filing. Finally, Petitioner promptly remedied its error, so any
`
`delay in the proceeding is outweighed by the interests in securing a just resolution
`
`3
`
`
`
`
`IPR2016-01404
`
`to this proceeding. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure
`
`the just, speedy, and inexpensive resolution of every proceeding.”)
`
`IV. CONCLUSION
`Pursuant to 37 C.F.R. § 42.5(c)(3), the Board should excuse Petitioner’s
`
`one-day-late Request. Both good cause and the interests of justice support this
`
`action because: (1) Petitioner timely served its Request, (2) Petitioner attempted
`
`to timely file its Request but could not due to technical difficulties, and (3)
`
`Petitioner filed its Request the next day after the technical difficulties were
`
`resolved.
`
`Dated: Feb. 20, 2018
`
`Respectfully submitted,
`
`
`
`By: /Roshan S. Mansinghani/
`Roshan S. Mansinghani
`Reg. No. 62,429
`
`
`4
`
`
`
`
`IPR2016-01404
`
`CERTIFCATE OF SERVICE
`The undersigned certifies that the foregoing MOTION TO EXCUSE
`
`LATE FILING OF PETITIONER’S REQUEST FOR REHEARING UNDER
`
`37 C.F.R. § 42.5(C)(3) was served on February 20, 2018 via email directed to
`
`counsel of record for the Patent Owner at the following:
`
`Lori A. Gordon
`Email: lgordon-PTAB@skgf. com
`Byron L. Pickard
`Email: bpickard-PTAB@skgf.com
`Steven W. Peters
`Email: speters-PTAB@skgf.com
`Daniel S. Block
`Email: dblock-PTAB@ skgf.com
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`
`
`James R. Hietala
`Email: jhietala@intven.com
`Tim R. Seeley
`Email: tim@intven.com
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`
`
`
`
`
`
`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
`
`
`
`
`
`
`
`
`Dated: February 20, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
