`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 32
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` Entered: March 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RICOH AMERICAS CORPORATION and XEROX CORPORATION
`Petitioner
`
`v.
`
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`________
`
`Case IPR2013-00302
`Patent 7,986,426 B1
`_______________
`
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and
`KARL D. EASTHOM, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`A conference call was held on March 7, 2014, involving respective counsel
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`for Petitioner and Patent Owner, and Judges Medley, Tierney, and Easthom. The
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`purpose of the call was to discuss the following issues raised by Petitioner: (1) the
`
`late filing of Patent Owner’s motion to amend (Paper 29); (2) the substance of the
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`
`
`IPR2013-00302
`Patent 7,986,426
`
`motion to amend, including whether Patent Owner met the requirement to confer
`
`prior to filing the motion to amend; (3) improper incorporation by reference of
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`arguments made in a declaration; (4) improper citations to record evidence in the
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`Patent Owner response (Paper 28); and (5) exhibits that were cited in the Glenn E.
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`Weadock declaration (“the Weadock declaration”), submitted by Patent Owner,
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`were not filed or served.
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`
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`Patent Owner’s Motion to Amend
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`Patent Owner’s motion to amend was due Friday, February 28, 2014. Patent
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`Owner filed and served its motion to amend Monday, March 3, 2014. Paper 29.1
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`Counsel for Petitioner explained that, in addition to the lateness of the motion to
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`amend, Patent Owner did not inform the Board of the nature of the extensive claim
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`amendment and thus did not “confer” with the Board regarding the amendment.
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`Counsel for Petitioner also discussed alleged substantive deficiencies. For
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`example, the motion allegedly treats the prior art with respect to the proposed
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`claim insufficiently. Another noted deficiency is that the Weadock declaration
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`contains arguments, which are incorporated improperly by reference into the
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`motion to amend. Based on all of the alleged deficiencies, Petitioner requests that
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`the motion to amend be dismissed with prejudice.
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`A late action will be excused on a showing of good cause or upon a Board
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`decision that consideration on the merits would be in the interests of justice.
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`
`1 Counsel for both parties indicated that service did not occur on
`February 28, 2014, despite the Certificate of Service (attached to the motion to
`2
`
`
`
`
`
`IPR2013-00302
`Patent 7,986,426
`
`37 C.F.R. § 42.5(c)(3). Based on the facts presented, the Board determined that it
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`is in the interests of justice to excuse the late filing of the Patent Owner’s motion to
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`amend. Counsel for Patent Owner explained that as soon as he realized that the
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`filing and service did not take place on Friday, he contacted the Board the
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`following Monday and was informed by Board personnel to file the motion. While
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`timely filing is paramount, based on the facts presented, the late filing is excused.
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`We disagree that Patent Owner did not satisfy the requirement that it confer
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`with the Board prior to filing a motion to amend. 37 C.F.R. § 42.121(a). Patent
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`Owner did confer as indicated in the December 20, 2013 Order. Paper 10. No
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`indication was provided by the Board that Patent Owner must confer again to
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`discuss the specific proposed amended claim as Petitioner seems to suggest.
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`A party who incorporates arguments by reference from one document into
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`another document runs the risk that an argument would be overlooked. 37 C.F.R.
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`§ 42.6(a)(3). Moreover, a Patent Owner bears the burden of proof to establish that
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`it is entitled to the requested relief. 37 C.F.R. § 42.20. To the extent that the
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`Patent Owner’s motion to amend is deficient with respect to these, or other,
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`requirements, the Petitioner will have an opportunity to address any alleged
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`deficiencies in an opposition to the motion to amend.
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`The Board has considered all of the issues raised by the Petitioner
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`individually and together, but denies Petitioner’s request to dismiss the Patent
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`Owner’s motion to amend with prejudice.
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`
`
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`amend) indicating otherwise.
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`
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`3
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`
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`IPR2013-00302
`Patent 7,986,426
`
`
`Exhibits Cited in Testimony
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`Counsel for Petitioner explained that the Weadock declaration refers to
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`evidence that was neither filed nor served in violation of 37 C.F.R.
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`§ 42.51(b)(1)(i). Patent Owner agreed to file and serve, by March 10, 2014, the
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`evidence referred to in the Weadock declaration. Petitioner will have five days
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`from service of the exhibits to object, if necessary.
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`
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`Incorrect Citations Made in the Patent Owner Response
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`Lastly, counsel for Petitioner argued that the citations made in the Patent
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`Owner response to the Weadock declaration are incorrect. Counsel for Petitioner
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`agreed that some of the citations to paragraphs of the Weadock declaration are
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`incorrect and agreed to file a substitute Patent Owner response for the sole purpose
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`of correcting the citations to the Weadock declaration. Patent Owner further
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`agreed to serve a redlined version, showing the changes.
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`
`
`It is
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`Order
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`ORDERED that Petitioner’s request to dismiss Patent Owner’s motion to
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`amend with prejudice is denied;
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`FURTHER ORDERED that Patent Owner shall, by March 10, 2014, file as
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`exhibits the evidence referred to in the Weadock declaration; and
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`FURTHER ORDERED that Patent Owner shall, by March 10, 2014, file a
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`substitute Patent Owner response for the sole purpose of correcting the citations
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`
`
`4
`
`
`
`IPR2013-00302
`Patent 7,986,426
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`made to the Weadock declaration and serve a redlined copy showing the changes
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`made.
`
`
`
`
`
`PETITIONER:
`
`Michael Specht
`Mspecht-PTAB@skgf.com
`
`Jason Eisenberg
`Jasone-PTAB@skgf.com
`
`H. Keeto Sabharwal
`Keetos-PTAB@skgf.com
`
`Dennies Varughese
`Dvarughe-PTAB@skgf.com
`
`Richard Bemben
`Rbemben-PTAB@skgf.com
`
`PATENT OWNER:
`
`Scott Horstemeyer
`Scott.horstemeyer@thomashorstemeyer.com
`
`Andrew Crain
`Andrew.crain@thomashorstemeyer.com
`
`Vivek Ganti
`Vivek.ganti@thomashorstemeyer.com
`
`
`5
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`
`
`
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