`Entered: December 7, 2016
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`Trials@uspto.gov
`571-272-7822
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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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`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
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`v.
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`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
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`Case IPR2016-00950
`Patent 8,166,739 B2
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`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
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`TARTAL, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20(b)
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`IPR2016-00950
`Patent 8,166,739 B2
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`A conference call was held on December 6, 2016, between respective
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`counsel for Petitioner, H&S Manufacturing Company, Inc., Patent Owner,
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`Oxbo International Corporation, and Judges Kauffman, Tartal, and Cherry.
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`Petitioner seeks authorization to file a Motion for leave to file a Request for
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`Rehearing of the Decision Instituting Inter Partes Review in this proceeding
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`outside of the time provided by 37 C.F.R. § 42.71(d)(1). Patent Owner
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`opposed Petitioner’s request.
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`The Institution Decision was entered on November 2, 2016. Paper 7.
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`Pursuant to 37 C.F.R. § 42.71(d)(1), a request for rehearing of a decision to
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`institute a trial must be filed within 14 days of the entry of that decision.
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`There is no dispute that Petitioner did not file a request for rehearing within
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`the time provided, however, 37 C.F.R. § 42.5(c)(3) further provides that “[a]
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`late action will be excused on a showing of good cause or upon a Board
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`decision that consideration on the merits would be in the interests of
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`justice.”
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`Petitioner offers two reasons it contends it would show in a motion as
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`good cause and in the interests of justice for late filing of its request for
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`rehearing. First Petitioner asserts it did not appreciate that the time provided
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`for filing a request for rehearing of a decision instituting trial (14 days) was
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`different from the time provided for filing a request for rehearing of a
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`decision denying institution (30 days). See 37 C.F.R. § 42.71(d). Second,
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`Petitioner asserts that it seeks to raise the same issues in this proceeding in
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`its request for rehearing that it seeks to raise in requests for rehearing in
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`other proceedings concerning other patents in which institution of inter
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`partes review was denied. Petitioner suggests that it was only after
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`2
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`IPR2016-00950
`Patent 8,166,739 B2
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`reviewing the issues raised in these related proceedings that it decided
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`strategically that it should request rehearing in this proceeding based on the
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`same arguments. Petitioner further suggests it would be more efficient if the
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`issues were presented and resolved in all of the proceedings.
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`Patent Owner contends that Petitioner effectively seeks to obviate the
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`need to comply with the time limit for requesting a rehearing of an
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`institution decision merely because Petitioner later decides to seek rehearing
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`in another proceeding. Patent Owner further argues it would be prejudiced
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`by introducing uncertainty over whether additional grounds of
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`unpatentability will be instituted at this stage of the proceeding when it is in
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`the process of preparing a response. Petitioner, however, represented that it
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`was willing to adjust the schedule as necessary to provide Patent Owner with
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`the time it is entitled to for a response.
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`We deny Petitioner’s request for authorization to file a motion for
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`leave to file a Request for Rehearing of the Institution Decision outside of
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`the time provided by 37 C.F.R. § 42.71(d)(1). First, we are not persuaded
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`that a party’s failure to identify and comply with a time limit clearly
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`articulated in our rules supports a showing of good cause for excusing such
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`late action. Second, a shorter period of time for filing a request for rehearing
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`in a proceeding that is instituted, as opposed to one in which institution is
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`denied, is supported by the need to adhere to a schedule that results in a final
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`decision within 12 months. Petitioner had the opportunity to timely request
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`rehearing in this proceeding, but did not do so and only chose to after
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`evaluating its arguments in other proceedings. We are not persuaded that
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`Petitioner can show good cause or the interests of justice support
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`3
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`IPR2016-00950
`Patent 8,166,739 B2
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`disregarding the time limit for filing a request for rehearing of the institution
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`decision in this proceeding.
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`For the foregoing reasons, it is hereby:
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`ORDERED that Petitioner’s request for authorization to file a motion
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`for leave to file a Request for Rehearing of the Institution Decision outside
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`of the time provided by 37 C.F.R. § 42.71(d)(1) is denied.
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`4
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`5
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`IPR2016-00950
`Patent 8,166,739 B2
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`PETITIONER
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`Brad D. Pedersen
`Eric H. Chadwick
`Michael P. Gates
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`gates@ptslaw.com
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`PATENT OWNERS
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`Andrew J. Lagatta
`Gregory A. Sebald
`MERCHANT & GOULD P.C.
`alagatta@merchantgould.com
`gsebald@merchantgould.com