Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: February 24, 2015
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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-00436, IPR2015-00437,
`IPR2015-00438, and IPR2015-00439
`Patent 8,599,001 B21
`
`Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Correct Filing Date
`37 C.F.R. §§ 42.5, 42.6
`
`
`
`1 This Decision addresses an issue pertaining to all four cases. Therefore,
`we exercise our discretion to issue one Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: February 24, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-00436, IPR2015-00437,
`IPR2015-00438, and IPR2015-00439
`Patent 8,599,001 B21
`
`Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Correct Filing Date
`37 C.F.R. §§ 42.5, 42.6
`
`
`
`1 This Decision addresses an issue pertaining to all four cases. Therefore,
`we exercise our discretion to issue one Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`Petitioner filed, in each of the instant proceedings, a motion to correct
`the filing date accorded to its petition. See IPR2015-00436, Paper 2
`(“Mot.”); IPR2015-00437, Paper 2; IPR2015-00438, Paper 2;
`IPR2015-00439, Paper 3. Patent Owner did not file an opposition to any of
`the motions. See 37 C.F.R. § 42.25(a)(1). As the papers and facts of the
`proceedings are similar, we cite to the papers filed in Case IPR2015-00436.
`The petitions in the instant proceedings were accorded a filing date of
`December 19, 2014—the date when the petitions and accompanying
`documents were submitted in the Patent Review Processing System
`(“PRPS”). Paper 7, 1. Petitioner filed, with each petition, a “motion” and
`“supplement to motion” stating that it began the process of filing in PRPS on
`December 16, 2014, but could not complete the process because of a PRPS
`outage. See Mot. 1; Paper 4, 1. Petitioner states that the petitions and
`accompanying documents were mailed to the Office on December 16, 2014,
`in accordance with 37 C.F.R. § 42.6(b)(2)(i), the filing procedures listed on
`the Board’s website, and instructions received from Board administrative
`personnel during the time that PRPS was unavailable. See Mot. 1; Paper 3,
`62 (certificate of mailing); Paper 4, 1. The petitions include an authorization
`to charge the deposit account of Petitioner’s counsel for the filing fees, and a
`certificate of service indicating that they were mailed to Patent Owner on
`December 16, 2014. Paper 3, 4–5, 60–61, 63. Petitioner requests that the
`petitions be accorded a filing date of December 16, 2014. Paper 4, 1.
`The Board’s rules provide that “[u]nless otherwise authorized,
`submissions are to be made to the Board electronically via the Internet
`according to the parameters established by the Board and published on the
`Web site of the Office.” 37 C.F.R. § 42.6(b)(1). Filing by other means,
`
`
`
`2
`
`
`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`such as by mail, requires a “motion requesting acceptance of the
`submission” and identification of the “date of transmission where a party
`seeks a filing date other than the date of receipt at the Board.” 37 C.F.R.
`§ 42.6(b)(2).
`We have confirmed that PRPS experienced an emergency outage on
`December 16–18, 2014, and was unavailable for parties to submit petitions
`or other documents electronically. For administrative efficiency, the Board
`adopted the following special procedure to be followed during this
`emergency outage, and published it on the Board’s Web site (at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp):
`PRPS is currently down as of December 16, 2014 3:00 pm EST.
`PTAB will be extending deadlines for the parties for all matters
`that do not have statutory deadlines until the site becomes
`available. As for petition filings, patent owner responses,
`motions, and requests for rehearing (on institution decisions or
`final decisions) and any other matters that have an imposed
`deadline or statutory due date, the parties should send an e-mail
`to TRIALS@USPTO.GOV indicating the need to file one of
`these items. DO NOT send attachments. PTAB will authorize
`filing of late attachments and PTAB will change the filing dates
`in PRPS to reflect the appropriate filing date. ALL MATTERS
`SHOULD BE SERVED ON OPPOSING COUNSEL ON THE
`APPROPRIATE DUE DATE.
`The Board also indicated to parties who contacted the Board during the
`emergency outage that the Board would consider a petition or document that
`is submitted in accordance with the aforementioned special procedure to be
`filed timely. Subsequently, the Board published on the Board’s Web site a
`second notice regarding the PRPS emergency outage, which, in part,
`provided the following:
`
`
`
`3
`
`
`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`Accordingly, for a matter with an imposed deadline or statutory
`due date, the Board deems filed, in accordance with 37 C.F.R.
`§ 42.6(b)(1), any paper enumerated in the notice above that was
`submitted in accordance with the instructions set forth above, as
`of the date an e-mail was sent to Trials@uspto.gov indicating
`the need to file the paper, as long as the paper was served on
`opposing counsel on the appropriate due date, and the paper,
`accompanied by
`the appropriate fee, was subsequently
`submitted in PRPS when it became available.
`On December 16, 2014, Petitioner began the filing process in PRPS,
`and then sent emails to the Board for each of the instant proceedings when
`PRPS became unavailable. Petitioner served the petitions and
`accompanying documents on Patent Owner, and also mailed copies to the
`Board. See Paper 3, 62–63. Once PRPS became available again, Petitioner
`exercised reasonable diligence in submitting its petitions, with the respective
`“motion” and “supplement to motion” for each proceeding, on December 19,
`2014, in accordance with the Board’s special procedure.
`Based on our review of the record, Petitioner complied with all of the
`filing requirements of 35 U.S.C. § 312(a) and followed the proper
`procedures for filing its petitions in view of the temporary unavailability of
`PRPS. Accordingly, we conclude that it would be appropriate under the
`circumstances to correct the filing date accorded to the petitions.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion to correct the filing date accorded
`to its petition in each of the instant proceedings is granted; and
`FURTHER ORDERED that the petitions in the instant proceedings
`are accorded a filing date of December 16, 2014.
`
`
`
`
`
`4
`
`
`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`PETITIONER:
`
`A. Justin Poplin
`Timothy K. Sendek
`Allan J. Sternstein
`Josh C. Snider
`LATHROP & GAGE LLP
`patent@lathropgage.com
`TSendek@lathropgage.com
`ASternstein@lathropgage.com
`jsnider@lathropgage.com
`
`
`PATENT OWNER:
`
`David K.S. Cornwell
`Jason D. Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`davidc-PTAB@skgf.com
`jasone-PTAB@skgf.com
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART & FLORY, LLP
`Flory@glbf.com
`linn@glbf.com
`
`
`
`
`
`
`
`
`5
`
`
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