`Tel: 571-272-7822
`
`
`
`
`
`Paper 27
`Entered: April 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00984
`Patent 8,754,780 B2
`_______________
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Petitioner Emerson's Exhibit 1031
`Page 1 of 4
`
`
`
`IPR2016-00984
`Patent 8,754,780 B2
`
`
`
`
`
`
`Pursuant to our July 27, 2016 Order (Paper 10), Sipco, LLC (“Patent
`
`Owner”) seeks our authorization to file a third Request for a Certificate of
`
`Correction and Petition to Accept an Unintentionally Delayed Priority Claim
`
`and for Expedited Consideration (collectively, “Third Request”) with respect
`
`to U.S. Patent No. 8,754,780 B2 (the “’780 patent”). On April 7, 2017,
`
`Patent Owner filed a response (Paper 26) to our March 30, 2017 order to
`
`show cause why we should grant its Third Request (Paper 24, “Order to
`
`Show Cause”). Petitioner opposes Patent Owner’s request, and seeks
`
`authorization to file a reply to Patent Owner’s response to our Order to Show
`
`Cause.
`
`The application to which the ’780 patent claims priority, U.S.
`
`Application No. 13/173,499 (the “’499 application”) (Ex. 1026, 2–3) issued
`
`as a patent, U.S. Patent No. 8,212,667, several months prior to the filing of
`
`the application leading to the ’780 patent (Ex. 1030, 2–3). Accordingly,
`
`there is no co-pendency between the ’780 patent and the ’499 application.
`
`On May 26, 2016, nearly one month after the filing date accorded to
`
`the petition in this proceeding, Patent Owner filed, with respect to the
`
`’780 patent, both a Request for a Certificate of Correction (Ex. 1023,
`
`“Request”) and Petition to Accept an Unintentionally Delayed Priority
`
`Claim and for Expedited Consideration (Ex. 1022, Priority Claim Petition)
`
`(collectively, “First Request.”). In the First Request, Patent Owner sought to
`
`amend its claim of priority to an application that it alleges shares co-
`
`pendency with the application leading to the ’780 patent, U.S. Application
`
`13/222,216. Ex. 1022, 2; Ex. 1023, 2. On November 14, 2016, the Petitions
`
`Branch granted Patent Owner’s request for expedited review of Patent
`
`Owner’s petition, but otherwise dismissed the petition for failure to comply
`
`2
`
`Petitioner Emerson's Exhibit 1031
`Page 2 of 4
`
`
`
`IPR2016-00984
`Patent 8,754,780 B2
`
`with 35 U.S.C. § 120 and 37 C.F.R § 1.78(d)(2), which requires a reference
`
`
`
`
`
`be filed in an Application Data Sheet. Ex. 3001.
`
`Pursuant to our July 27, 2016 Order (Paper 10), Patent Owner
`
`subsequently sought, and we granted, authorization to file a second Request
`
`for a Certificate of Correction and Petition to Accept an Unintentionally
`
`Delayed Priority Claim and for Expedited Consideration (collectively,
`
`“Second Request”). Paper 20, 3. On January 20, 2017, the Petitions Branch
`
`granted Patent Owner’s request for expedited review of Patent Owner’s
`
`petition, but dismissed Petitioner’s request for correction of the ’780 patent’s
`
`priority date for failure to “make a reference to the first (earliest) application
`
`and every intermediate application.” Ex. 3002, 2. The chain of priority in
`
`Patent Owner’s petition does not match the chain of priority in the reference
`
`to which Patent Owner seeks to claim priority. Id.
`
`Patent Owner now seeks our authorization to file a third Request for a
`
`Certificate of Correction and Petition to Accept an Unintentionally Delayed
`
`Priority Claim and for Expedited Consideration with the Petitions Branch
`
`(collectively, “Third Request”). We ordered Patent Owner to show cause
`
`why we should authorize it to file a Third Request. Paper 24. Patent
`
`Owner’s response to our Order to Show Cause alleges that the mistakes in
`
`the Second Request are due to an inadvertent omission, but Patent Owner
`
`does not explain any particular circumstances that would justify its mistakes.
`
`Paper 26, 4. Also, Patent Owner’s repeated mistakes indicate deliberate
`
`indifference toward avoiding errors. Under the present circumstances, we
`
`exercise our jurisdiction pursuant to 37 C.F.R § 42.3, and deny Patent
`
`Owner’s request to file a Third Request. Because we deny Patent Owner’s
`
`
`
`3
`
`Petitioner Emerson's Exhibit 1031
`Page 3 of 4
`
`
`
`IPR2016-00984
`Patent 8,754,780 B2
`
`Third Request, Petitioner’s request to file a reply to Patent Owner’s response
`
`
`
`
`
`to our Order to Show Cause is denied as moot.
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s request to file a Request for a
`
`Certificate of Correction and Petition to Accept an Unintentionally Delayed
`
`Priority Claim and for Expedited Consideration is denied.
`
`
`
`
`
`
`
`PETITIONER:
`
`Don Jackson
`djackson@dbjg.com
`
`PATENT OWNER:
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`4
`
`Petitioner Emerson's Exhibit 1031
`Page 4 of 4
`
`
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