Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 17
`Entered: August 12, 2016
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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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`PLAID TECHNOLOGIES, INC.,
`Petitioner,
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`v.
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`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
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`Case IPR2016-00275
`Patent 6,199,077 B1
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`
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`
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`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
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`HUDALLA, Administrative Patent Judge.
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`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`I. INTRODUCTION
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`Petitioner, Plaid Technologies, Inc. (“Plaid”), filed a Petition
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`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–12 of U.S.
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`Patent No. 6,199,077 B1 (“the ’077 patent,” Ex. 1001). Plaid had been
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`served with the complaint in the related district court case on December 2,
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`Case IPR2016-00275
`Patent 6,199,077 B1
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`2014. See Pet. 2 (citing Ex. 1002). Yodlee, Inc. and Yodlee.com, Inc.
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`(“Yodlee”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
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`Plaid’s Petition was accorded a filing date of December 3, 2015.
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`Paper 3, 1. Subsequently, Plaid filed a motion to change the filing date
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`accorded to the Petition from December 3, 2015, to December 2, 2015.
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`Paper 9 (“Mot.”). Yodlee filed an opposition to the motion. Paper 10
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`(“Opp.”). Plaid filed a reply in support of its motion. Paper 13 (“Reply”).
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`We denied Plaid’s motion to change the filing date accorded to the
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`Petition, and we denied institution of an inter partes review as to any of the
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`asserted grounds, because the Petition was time-barred under 35 U.S.C.
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`§ 315(b). Paper 15 (“Dec.”). Plaid filed a Request for Rehearing asking that
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`we reconsider our Decision in this regard. Paper 16 (“Req. Reh’g.”).
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`We grant Plaid’s request insofar as we have reconsidered our Decision
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`in light of the argument presented in the Request for Rehearing, but we
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`decline to modify our previous Decision.
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`II. ANALYSIS
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`When reconsidering a decision on institution, we review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
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`may be determined if a decision is based on an erroneous interpretation of
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`law, if a factual finding is not supported by substantial evidence, or if the
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`decision represents an unreasonable judgment in weighing relevant factors.
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`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005);
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting
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`rehearing has the burden of showing the decision should be modified, which
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`includes specifically identifying all matters the party believes we
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`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
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`Plaid contends our Decision “misapprehends the law regarding
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`[§ 315(b)] by reading regulatory requirements into that statute and creating
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`inconsistency with other Board opinions.” Req. Reh’g. 1. Specifically,
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`Plaid focuses on our determination that December 3, 2015, was the earliest
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`date by which Plaid satisfied the service requirement for according the
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`Petition a filing date under 37 C.F.R. §§ 42.105(a), 42.106(a). See Dec. 6–7.
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`This date was after the one-year deadline in this case under § 315(b), which
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`was December 2, 2015. Id. at 4. Plaid contends we wrongly determined that
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`“service is a statutory requirement” because “the service requirements of 35
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`U.S.C. §32(a) and 37 C.F.R. §§ 42.105(a), 42.106(a) are not incorporated
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`into § 315(b).” Req. Reh’g 3–4. As such, Plaid contends we effectively
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`“eliminate[d] any discretion to excuse ‘late service’ [under 37 C.F.R.
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`§ 42.5(b) and (c)(3),] a finding that is contrary to many of the Board’s past
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`decisions.” Id. at 5.
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`Plaid’s arguments do not persuade us of an abuse of discretion in our
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`treatment of the service issue. Our regulations state that a filing date will not
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`be accorded to a Petition until, among other things, service is effected. See
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`37 C.F.R. §§ 42.105(a), 42.106(a). The undisputed evidence put forth by
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`Plaid indicates that it did not attempt to serve Yodlee with the Petition and
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`supporting evidence until December 3, 2015. See Req. Reh’g 2; Ex. 1022
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`¶ 9. In our Decision, we applied the regulations to the particular facts of this
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`case and “determine[d] that December 3, 201[5], is the earliest date by
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`which Plaid satisfied the service requirement for according the Petition a
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`filing date.” Dec. 7 (citing 37 C.F.R. §§ 42.105(a), 42.106(a)). Therefore,
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`we maintained the initial filing date accorded to the Petition, which was one
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`day after the statutory deadline under § 315(b), and we termed Plaid’s
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`service activities to be “late service.”1 Dec. 6–7. Indeed, Plaid would have
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`had no reason to file a motion to change the filing date had its actions not
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`been “late.”
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`Moreover, our Decision expressly stated that we did not need to
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`“address whether, under appropriate circumstances, we have authority to
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`grant an earlier filing date.” Dec. 8. Rather, our Decision focused on
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`whether Plaid had shown good cause to waive the service requirements
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`imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). Id. at 8–10. Irrespective
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`of the interplay among the relevant regulations and statutory deadline under
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`§ 315(b), we found that Plaid had not shown good cause and that it was not
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`in the interests of justice to excuse Plaid’s late service under 37 C.F.R.
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`§ 42.5(b) and (c)(3). See id. Among other reasons, we were not persuaded
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`that waiting for potential changes from a declarant constituted good cause
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`for Plaid to delay its filing and eventual service of the Petition and
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`supporting evidence. See Dec. 8–9. We also weighed the potential
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`1 Plaid contends we determined “that service on the same day as filing is a
`statutory requirement.” Req. Reh’g 4–5. We are not aware of any part of
`Decision that discusses same day service.
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`prejudice2 to each party and found that, although the “considerations
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`mirror[ed] one another, . . . Plaid had control over the fate of the Petition,
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`whereas Yodlee did not.” See id. at 9–10. Therefore, Plaid’s argument that
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`we premised our Decision on a determination that service is a requirement
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`for “fil[ing]” under § 315(b) is misplaced. Furthermore, the fact that we
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`considered whether Plaid had shown good cause refutes Plaid’s assertion
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`(see Reh’g Req. 4–6) that we misconstrued § 315(b) in a way that squelches
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`our authority to excuse late actions and contravenes prior Board decisions.
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`Because our Decision was based on the threshold issue of whether Plaid had
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`shown good cause to excuse its late service of the Petition and supporting
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`evidence, we could not have, and did not, erroneously interpret § 315(b),
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`contrary to Plaid’s argument.
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`Plaid also argues that we misapprehended § 315(b) by wrongly
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`incorporating the “complete petition” requirements of 37 C.F.R. §§ 42.104
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`and 42.106(a) into this statute. Reh’g Req. 7–8. Plaid contends these
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`regulations do not prevent us “from finding that Petitioner ‘filed’ the ’077
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`Petition within one-year of being served with a complaint when the ’077
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`Petition was uploaded and the fee was paid.” Id. at 8. Plaid further contends
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`that the subset of Petition papers that it was able to file before midnight on
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`2 We do not agree with Plaid’s characterization that our Decision wrongly
`“focuse[d] on comparing whether the ’077 Petition was instituted versus not
`instituted in evaluating whether there is prejudice.” Reh’g Req. 6–7. Our
`prejudice analysis made no mention of an instituted inter partes review
`proceeding; rather, we considered the case in which the Petition would “go
`forward” despite its untimeliness so it could be considered on its merits.
`Dec. 9–10. We weighed this against the possibility that “Plaid’s Petition
`[would] be time-barred if we d[id] not excuse the late service.” Id. at 10.
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`the December 2, 2015, bar date was sufficient to provide adequate notice of
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`the basis for the requested relief. Id. at 8–9.
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`Again, Plaid’s arguments do not persuade us of an abuse of discretion.
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`Our Decision does not draw any conclusions about the Board’s inability to
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`waive its filing regulations in light of § 315(b). Rather, we determined that
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`Plaid’s failure to file a complete petition before the midnight deadline was
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`an “additional consideration that weigh[ed] in favor of denying institution in
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`this case.” Dec. 10–11. Plaid does not dispute that several exhibits to its
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`Petition were not uploaded until the early morning hours of December 3,
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`2015. Req. Reh’g 9. In light of our regulations stating that a filing date will
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`not be accorded to a Petition unless it is complete, see 37 C.F.R. §§ 42.104,
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`42.106, the Decision accurately stated that Plaid’s Petition—in its
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`incomplete state as of midnight on December 2, 2015—was “inadequate to
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`garner a filing date.”3 Dec. 11–12, 14. Our consideration of this fact further
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`supported our decision to deny Plaid’s motion to change the filing date and,
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`3 Plaid previously argued that a Petitioner only needs to file a Petition paper
`without any supporting evidence and exhibits in order to comply with the
`language of 35 U.S.C. § 315(b). See Reply 1–2. Plaid echoes that argument
`in the instant Request for Rehearing. See Req. Reh’g 9. Our Decision
`considered that rationale with reference to our regulations governing filing
`dates rather than § 315(b). See Dec. 11–12 (citing 37 C.F.R. §§ 42.104,
`42.106(a)) (“[A] fronting document, standing alone, is inadequate to garner a
`filing date”). Plaid now purports to find error in our Decision based on the
`fact that “multiple accompanying exhibits” also were filed before midnight,
`so Plaid contends that it filed more than a “fronting document, standing
`alone.” Req. Reh’g 8–9. Under the particular circumstances presented in
`this case, the fact that Plaid additionally filed a subset of the accompanying
`exhibits before midnight on December 2, 2015, does not materially affect
`our analysis.
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`ultimately, our decision to deny institution of an inter partes review. See
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`Dec. 10–11, 14–15.
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`III. CONCLUSION
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`For the reasons above, we conclude that Plaid has not met its burden
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`of showing an abuse of discretion in our Decision. We, therefore, deny
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`Plaid’s request to reverse our determination not to institute an inter partes
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`review.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that Plaid’s Request for Rehearing is granted to the extent
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`that we have reconsidered our determination not to institute an inter
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`partes review; and
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`FURTHER ORDERED that Plaid’s Request for Rehearing is denied
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`in all other respects.
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`Case IPR2016-00275
`Patent 6,199,077 B1
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`PETITIONER:
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`Brian Buroker
`Omar Amin
`bburoker@gibsondunn.com
`oamin@gibsondunn.com
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`PATENT OWNER:
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`David Hoffman
`IPR12233-0046IP1@fr.com
`hoffman@fr.com
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