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`571-272-7822
`Date Entered: December 11, 2013
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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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`PRINTING INDUSTRIES OF AMERICA
`Petitioner
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`v.
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`CTP INNOVATIONS
`Patent Owner
`____________
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`Case IPR2013-00474
`Patent 6,611,349
`____________
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`
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`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA
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`McNAMARA, Administrative Patent Judge.
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`ORDER REQUIRING COMPLIANCE WITH SERVICE REQUIREMENT
`ORDER REQUIRING FILING OF PRO HAC VICE MOTION
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`
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`Case IPR2013-000474
`Patent 6,611,349
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`Defective Service Issues
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`On July 29, 2013, Printing Industries of America (Petitioner) filed a petition
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`for inter partes review (Petition) of US Patent 6,611,349 (the ´349 Patent).
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`Petitioner served the Petition on CTP Innovations (Patent Owner) by first-class
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`mail. Paper No. 3. Petitioner’s service was defective under 37 C.F.R. § 42.6(e)(1),
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`which requires that service be made either electronically upon agreement of the
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`parties or by EXPRESS MAIL or by means at least as fast and reliable as
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`EXPRESS MAIL. Patent Owner did not object to Petitioner’s defective service.
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`On October 4, 2013 Patent Owner filed a Patent Owner Preliminary
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`Response (Preliminary Response) with a certificate of service indicating that the
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`Preliminary Response had been served on Petitioner by U.S. Express Mail on
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`October 4, 2013. Paper No. 11. Nearly two months later, on December 3, 2013,
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`Petitioner filed a Notice of Defective Certificate of Service (Notice of Defective
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`Service) requesting that the Board take notice of the Patent Owner’s failure to post
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`the Preliminary Response until October 9, 2013 and take appropriate action against
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`Patent Owner. Paper No. 12. On December 6, 2013 Patent Owner filed a
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`Response To Notice Of Defective Certificate Of Service and Corrected Certificate
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`of Service (Response to Petitioner’s Notice of Defective Service) in which Patent
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`Owner explained the delay was a result of a clerical error, that service was affected
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`by Priority Mail posted on October 9, 2013 and that Petitioner had not been
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`prejudiced. Paper No. 12.
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`As an initial matter, the Board notes that neither Petitioner nor Patent Owner
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`sought the Board's authorization to file either the Notice of Defective Service or
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`Patent Owner’s Response to the Petitioner’s Notice of Defective Service. The
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`parties should request a conference to seek the Board’s authorization before filing
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`2
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`Case IPR2013-000474
`Patent 6,611,349
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`any motions or requests for relief from the Board. 37 C.F.R. § 42.20. The Board
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`also takes judicial notice of the fact that since July 28, 2013, the United States
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`Postal Service has offered Priority Mail Express (overnight delivery to most
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`U.S. locations) and Priority Mail (1, 2 or 3 day delivery), which is not as fast as
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`Priority Mail Express. In view of the circumstances, if the parties do not agree to
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`accept service electronically, all service in this proceeding under
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`37 C.F.R. § 42.6(e)(1) should be made through the United States Postal Service as
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`Priority Mail Express, rather than Priority Mail. Neither the service of the Petition
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`nor the service of the Patent Owner Preliminary Response complied with this
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`requirement. In the future, all parties should comply with the service requirements
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`of 37 C.F.R. § 42.6(e)(1).
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`There is no need for any relief because neither party has been prejudiced in
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`this proceeding. Patent Owner timely filed its Preliminary Response
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`notwithstanding Petitioner’s defective service of the Petition. Petitioner was also
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`not prejudiced by the short delay in receiving the Preliminary Response. There is
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`no indication that Petitioner even noticed the delay for almost two months. In
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`addition, Petitioner is not prejudiced because there is no further action the
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`Petitioner can take unless and until the Board institutes a trial.
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`Pro Hac Vice Issue
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`In its Mandatory Notices filed on August 20, 2013 Patent Owner designated
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`Samuel F. Miller as Back-up Counsel pending pro hac vice admission. To date the
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`board has no record of receiving a motion to admit Mr. Miller pro hac vice or the
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`required accompanying affidavit. Patent Owner should submit the requisite
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`Motion for pro hac vice Admission of Samuel F. Miller and accompanying
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`affidavit not later than December 13, 2013 or designate other Back-up Counsel and
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`file any required pro hac vice motions.
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`3
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`Case IPR2013-000474
`Patent 6,611,349
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`In consideration of the above,
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`It is ORDERED that for all future filings the parties comply with the service
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`requirements of 37 CFR 42. (6)(e)(1) by agreeing to electronic service or by
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`service through the United States Post Office by Priority Mail Express;
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`It is FURTHER ORDERED that Patent Owner submit any Back-up Counsel
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`designation and any necessary pro hac vice motion and accompanying affidavits
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`not later than December 13, 2013.
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`For PETITIONER:
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`John M. Adams
`Lawrence G. Zurawsky
`paip.law@verizon.net
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`For PATENT OWNER:
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`W. Edward Ramage
`eramage@bakerdonelson.com
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`Samuel Miller
`smiller@bakerdonelson.net
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`4
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