Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`Filed on behalf of: Patent Owner
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SHIELDMARK, INC.
`Petitioner,
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`v.
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`CLIFFORD A. LOWE
`Patent Owner.
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`____________________________
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`Case PGR2019-00058
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` U.S. Patent No.10,214,664
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` __________________________
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`Before PAULA CONN, Trial Paralegal
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`ACCEPT THE LATE FILING OF ITS REHEARING REQUEST
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`U.S. Patent No. 10,214,664
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`Filed on behalf of: Patent Owner
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
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`SHIELDMARK, INC.
`Petitioner,
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`v.
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`CLIFFORD A. LOWE
`Patent Owner.
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`____________________________
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`Case PGR2019-00058
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` U.S. Patent No.10,214,664
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` __________________________
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`Before PAULA CONN, Trial Paralegal
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`ACCEPT THE LATE FILING OF ITS REHEARING REQUEST
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`Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`In support of its motion for leave to accept late filing of its Rehearing
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`Request, originally due April 8, 2020, Counsel for Petitioner argues that: the
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`person experienced in filing documents with the Board was absent from Counsel’s
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`office on April 8, 2020, the office being closed due to the COVID-19 outbreak;
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`Counsel for Petitioner personally undertook the task and believed he had properly
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`filed the Rehearing Request; and Patent Owner will not be prejudiced by grant of
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`leave because Counsel for Petitioner served Counsel for Patent Owner at that time.
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`The undersigned Counsel for Patent Owner respectfully disagrees.
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`Because of the COVID-19 outbreak, requests for rehearings in AIA trial
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`proceedings due between March 27, 2020 and April 30, 2020 were to be
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`considered timely if filed within 30 days of the original due date and accompanied
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`by a statement that the delay in filing was due to the COVID-19 outbreak. The 30-
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`day extension was intended to grant forbearance as to the timeliness of a filing—
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`that is, a delay in filing due to the COVID-19 outbreak—not simply an error in
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`filing, as occurred here. In the event the COVID-19 outbreak prevented or
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`interfered with a filing before the Board, Petitioner was to contact the PTAB for an
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`extension of time. On April 8, 2020, Counsel for Petitioner received a filing receipt
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`for a Rehearing Request stating, in capital letters, “THERE WERE NO
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`DOCUMENTS SUBMITTED WITH THIS REQUEST.” Yet, 35 days passed
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`with no attempt by Petitioner to contact the PTAB. Therefore, what is relevant to
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`1
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`Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`Petitioner’s request that the PTAB accept its late filing is whether, in view of
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`Petitioner’s filing error, (a) good cause exists for leave, or (b) the interests of
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`justice demand it. Neither applies here.
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`COVID-19 may have played a part in Counsel for Petitioner’s office being
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`closed on April 8, 2020 with the person experienced in filing documents with the
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`Board being absent from the office that day. However, COVID-19 does not explain
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`why this particular Counsel for Petitioner, and not one of the two other Counsel of
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`record for Petitioner—one from a separate law firm—undertook the filing of
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`Rehearing Request on April 8, 2020; why Counsel waited until the “eleventh hour”
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`to file the Rehearing Request; whether Counsel reviewed the filing process, which
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`is detailed on the PTAB website, including a step for checking to assure a filing is
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`successful; whether Counsel did or did not call the “Help” number on the PTAB
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`website for assistance; why Counsel did not read the filing receipt stating in capital
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`letters, “THERE WERE NO DOCUMENTS SUBMITTED WITH THIS
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`REQUEST;” or why Co-Counsel did not read the filing receipt and inform him of
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`the need for remedial action. These unanswered questions demonstrate Petitioner’s
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`filing error was an error and not the result of the COVID-19 outbreak—and the
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`absence of good cause to excuse the filing error.
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`Petitioner had over 30 days in which to review its April 8, 2020 Rehearing
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`Request filing. Had it been reviewed before May 8, 2020, believing, as argued, that
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`Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`the COVID-19 outbreak necessitated its late filing, Counsel for Petitioner could
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`have timely refiled with the omitted document and such Statement. If, in fact, the
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`COVID-19 outbreak prevented or interfered with filing, which is expressly denied
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`for the reasons stated above, Counsel for Petitioner had over 30 days in which to
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`contact the PTAB for an extension of time. Yet, it was not reviewed—further
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`demonstrating the absence of good cause. Instead, a Supervisory Paralegal
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`contacted Petitioner on May 13, 2020 to advise of the filing error.
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`That Patent Owner had been served a copy of Petitioner’s Rehearing
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`Request is simply irrelevant to the issue of whether Petitioner’s filing error is
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`excusable for good cause. As to “the interests of justice,” it is the Patent Owner
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`who is prejudiced by the further delay. As acknowledged by Counsel for
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`Petitioner, the parties are in litigation and that litigation is suspended during these
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`proceedings. Litigation matters (though not jury trials) are proceeding before
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`district courts for the Northern District of Ohio; they are not suspended because of
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`COVID-19. Nor does further delay serve the purpose of time restraints on
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`preliminary AIA proceedings—to expedite return to litigation should an AIA post-
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`grant review petition be denied and proceedings not instituted. That purpose is
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`furthered served here by denying late filing, without prejudice to Petitioner, who
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`can fully argue its invalidity position before the court.
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`Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`Dated: June 2, 2020
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`Respectfully submitted,
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`/Ray L. Weber/
`Ray L. Weber, USPTO Reg. No. 26,519
`Lead Counsel for Patent Owner
`Renner, Kenner, Greive, Bobak,
` Taylor & Weber Co., L.P.A.
`106 South Main Street
`Huntington Tower, Suite 400
`Akron, OH 44308-1412
`Phone: 330-376-1242 ext. 4362
`Fax: 330-376-9646
`rlweber@rennerkenner.com
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`4
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`Case PGR2019-00058
`U.S. Patent No. 10,214,664
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on June 2, 2020, I
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`caused to be served electronically at their e-mail addresses listed below a true and
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`correct copy of the foregoing PATENT OWNER’S OPPOSITION TO
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`PETITIONER’S MOTION TO ACCEPT THE LATE FILING OF ITS
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`REHEARING REQUEST upon the following counsel of record as listed in the
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`Service Information section of the Petition:
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`Lead Counsel:
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`Howard L. Wernow
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`USPTO Reg. No. 69,825
`Sand, Sebolt & Wernow Co., LPA
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`4940 Munson Street NW
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`Suite 1100
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`Canton, OH 44718
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`Phone: 330-244-1174
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`Fax: 330-244-1173
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`Howard.Wernow@sswip.com
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`Backup Lead Counsel:
`Joseph A. Sebolt
`USPTO Reg. No. 35,352
`Sand, Sebolt & Wernow Co.,
`LPA
`4940 Munson Street NW
`Suite 1100
`Canton, OH 44718
`Phone: 330-244-1174
`Fax: 330-244-1173
`Joe.Sebolt@sswip.com
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`Richard B. Megley
`USPTO Reg. No. 41,992
`Lee Sheikh Megley & Haan
`111 West Jackson Boulevard
`Suite 2230
`Chicago, IL 60604
`Phone: 312-982-0070
`Fax: 312-982-0071
`rmegley@leesheikh.com
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`/Ray L. Weber/
`Ray L. Weber
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`5
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