`
`571-272-7822
`Date Entered: December 12, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRINTING INDUSTRIES OF AMERICA
`Petitioner
`
`v.
`
`CTP INNOVATIONS
`Patent Owner
`____________
`
`Case IPR2013-00489
`Patent 6,738,155
`____________
`
`
`
`
`Before HOWARD B. BLANKENSHIP, BENJAMIN D. M. WOOD, and
`BRIAN J. McNAMARA
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER CONCERNING COMPLIANCE WITH SERVICE REQUIREMENTS
`
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`Case IPR2013-000489
`Patent 6,738,155
`
`
`
`
`Defective Service Issues
`
`On August 2, 2013, Printing Industries of America (Petitioner) filed a
`
`petition for inter partes review (Petition) of US Patent 6,738,155 (the ´155 Patent).
`
`Petitioner served the Petition on CTP Innovations (Patent Owner) by first-class
`
`mail. Paper No. 5. Petitioner’s service was defective under 37 C.F.R. § 42.6(e)(1),
`
`which requires that service be made either electronically upon agreement of the
`
`parties or by EXPRESS MAIL or by means at least as fast and reliable as
`
`EXPRESS MAIL. Patent Owner did not object to Petitioner’s defective service.
`
`On October 4, 2013 Patent Owner filed a Patent Owner Preliminary
`
`Response (Preliminary Response) with a certificate of service indicating that the
`
`Preliminary Response had been served on Petitioner by U.S. Express Mail on
`
`October 4, 2013. Paper No. 11. Nearly two months later, on December 3, 2013,
`
`Petitioner filed a Notice of Defective Certificate of Service (Notice of Defective
`
`Service) requesting that the Board take notice of the Patent Owner’s failure to post
`
`the Preliminary Response until October 9, 2013 and take appropriate action against
`
`Patent Owner. Paper No. 12. On December 6, 2013 Patent Owner filed a
`
`Response To Notice Of Defective Certificate Of Service and Corrected Certificate
`
`of Service (Response to Petitioner’s Notice of Defective Service) in which Patent
`
`Owner explained the delay was a result of a clerical error, that service was affected
`
`by Priority Mail posted on October 9, 2013 and that Petitioner had not been
`
`prejudiced. Paper No. 12.
`
`As an initial matter, the Board notes that neither Petitioner nor Patent Owner
`
`sought the Board's authorization to file either the Notice of Defective Service or
`
`Patent Owner’s Response to the Petitioner’s Notice of Defective Service. The
`
`parties should request a conference to seek the Board’s authorization before filing
`
`
`
`2
`
`
`
`Case IPR2013-000489
`Patent 6,738,155
`
`any motions or requests for relief from the Board. 37 C.F.R. § 42.20. The Board
`
`also takes judicial notice of the fact that since July 28, 2013, the United States
`
`Postal Service has offered Priority Mail Express (overnight delivery to most
`
`U.S. locations) and Priority Mail (1, 2 or 3 day delivery), which is not as fast as
`
`Priority Mail Express. In view of the circumstances, if the parties do not agree to
`
`accept service electronically, all service in this proceeding under
`
`37 C.F.R. § 42.6(e)(1) should be made through the United States Postal Service as
`
`Priority Mail Express, rather than Priority Mail. Neither the service of the Petition
`
`nor the service of the Patent Owner Preliminary Response complied with this
`
`requirement. In the future, all parties should comply with the service requirements
`
`of 37 C.F.R. § 42.6(e)(1).
`
`There is no need for any relief because neither party has been prejudiced in
`
`this proceeding. Patent Owner timely filed its Preliminary Response
`
`notwithstanding Petitioner’s defective service of the Petition. Petitioner was also
`
`not prejudiced by the short delay in receiving the Preliminary Response. There is
`
`no indication that Petitioner even noticed the delay for almost two months. In
`
`addition, Petitioner is not prejudiced because there is no further action the
`
`Petitioner can take unless and until the Board institutes a trial.
`
`In consideration of the above,
`
`It is ORDERED that for all future filings the parties comply with the service
`
`requirements of 37 CFR 42. (6)(e)(1) by agreeing to electronic service or by
`
`service through the United States Post Office by Priority Mail Express.
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2013-000489
`Patent 6,738,155
`
`
`
`For PETITIONER:
`
`John M. Adams
`Lawrence G. Zurawsky
`paip.law@verizon.net
`
`
`For PATENT OWNER:
`
`W. Edward Ramage
`eramage@bakerdonelson.com
`
`L. Clint Crosby
`ccrosby@bakerdonelson.com
`
`
`
`
`
`4
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