Paper No. 10
`Entered: October 6, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC., HTC CORPORATION, and
`HTC AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00757
`Patent 7,881,236 B2
`____________
`
`
`
`
`
`Before PETER P. CHEN and TERRENCE W. McMILLIN, Administrative
`Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Entered: October 6, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC., HTC CORPORATION, and
`HTC AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00757
`Patent 7,881,236 B2
`____________
`
`
`
`
`
`Before PETER P. CHEN and TERRENCE W. McMILLIN, Administrative
`Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2016-00757
`Patent 7,881,236
`
`
`On June 2, 2016, a Notice of Filing Date Accorded to Petition and
`Time for Filing Patent Owner Preliminary Response (Paper No. 5) was
`issued, stating: “Patent Owner may file a preliminary response to the petition
`no later than three months from the date of this notice.” Accordingly, Patent
`Owner’s Preliminary Response (Paper No. 8) was due on Friday, September
`2, 2016, but it was filed on Tuesday, September 6, 2016. Due to the
`intervening weekend and the Labor Day holiday on Monday, September 5,
`2016, the Preliminary Response was filed one business day late.
`On September 27, 2016, Petitioner’s counsel sent an email to the
`Board, stating “Petitioner requests a teleconference with the Board to seek
`the Board’s authorization to file a motion for expungement of Patent
`Owner’s untimely preliminary response.” Later that day, Patent Owner’s
`counsel sent an email to the Board, stating: “Patent Owner seeks
`authorization to file a motion for waiver of deadline related to Patent
`Owner’s preliminary patent owner response at this hearing.”
`On September 29, 2016, a conference call took place in order to
`discuss the late filing of the Preliminary Response. The parties were
`represented by their respective counsel.
`During the teleconference, Petitioner’s counsel argued the Preliminary
`Response should be expunged because: (i) a preliminary response is
`optional; (ii) the delay was not unavoidable; and (iii) the USPTO does not
`typically accept late-filed papers.
`Patent Owner’s counsel represented that the late filing was due to an
`“inadvertent and unintentional clerical error” causing the due date to be
`calendared for September 6 rather than September 2. In addition, Patent
`Owner’s counsel contended that there was no prejudice to Petitioner, as a
`
`
`
`2
`
`
`
`Case IPR2016-00757
`Patent 7,881,236
`
`Preliminary Response with the same substantive information and arguments
`was filed timely in IPR2016-01345, in which the Petition is substantially
`identical to the Petition in this proceeding. In addition, Patent Owner’s
`counsel noted that the same patent and challenged claims were also the
`subject of petitions in IPR2016-01228 and IPR2016-01229.
`The Petition (Paper No. 1 at 1) in IPR2016-01345 states: “[t]his
`Petition is substantially identical to the petition that ZTE (USA) Inc. et al
`filed on May 31, 2016 in IPR2016-00757 (‘the ZTE proceeding’), as this
`petition is limited to substantially the same claims, grounds, arguments, and
`evidence presented in the ZTE proceeding.” See also Patent Owner’s
`Preliminary Response in IPR2016-01345 (Paper No. 6 at 28) (describing the
`Petition in this proceeding and the Petition in IPR2016-01345 as “entirely
`redundant”). Our preliminary review of the Preliminary Response in this
`proceeding and the Preliminary Response in IPR2016-01345 indicates that
`these papers are substantially similar.
`During the teleconference, the parties represented that any papers filed
`would likely contain the same information and arguments made during the
`teleconference. The Board, therefore, denied the requests of both parties to
`authorize the filing of motions related to the late filing of the Preliminary
`Response.1
`The Board may excuse a late action “on a showing of good cause or
`upon a Board decision that consideration on the merits would be in the
`interests of justice.” 37 C.F.R. §42.5(c)(3). Although we do not find Patent
`Owner has established good cause excusing the late filing of the Preliminary
`
`
`1 37 C.F.R. § 42.20(b) provides: “[a] motion will not be entered without
`Board authorization.”
`
`
`
`3
`
`
`
`Case IPR2016-00757
`Patent 7,881,236
`
`Response, we find that, under the present circumstances, acceptance and
`consideration of the late-filed Preliminary Response is in the interests of
`justice.
`With regard to good cause, Patent Owner acknowledged “significant
`experience” in handling IPRs and admitted to an “inadvertent and
`unintentional clerical error” which caused the late filing. Based on this
`showing, we do not find good cause for excusing the late filing of the
`Preliminary Response.
`With regard to the interests of justice, the substance of the late-filed
`Preliminary Statement is before the Board in another proceeding, IPR2016-
`01345, which, as acknowledged by the parties, involves the same patent,
`claims, grounds, arguments, and evidence as this proceeding. It therefore
`appears all the information contained in the late-filed Preliminary Response
`is already before the Board and the Petitioner. As such, there appears to be
`no prejudice to the Petitioner related to the Preliminary Response having
`been filed one business day late. It will promote the interests of justice for
`the same information to be in the record and considered in this proceeding.
`Therefore, it is
`ORDERED that Patent Owner’s late action is excused; and
`FURTHER ORDERED that the Patent Owner’s Preliminary Response
`(Paper No. 8) will be accepted and considered in this proceeding.
`
`
`
`4
`
`
`
`Case IPR2016-00757
`Patent 7,881,236
`
`PETITIONER:
`Charles McMahon
`Hersh Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen Korniczky
`Martin Bader
`Ericka Jacobs Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppartmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`
`
`PATENT OWNER:
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`5
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