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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`ZTE (USA) INC.
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`Petitioner,
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`v.
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`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
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`___________________
`
`IPR2018-00274
`Patent No. 7,834,586
`___________________
`
`
`OPPOSITION TO PETITIONER'S RESPONSE TO
`ORDER TO SHOW CAUSE
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`
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`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00274
`Patent 7,834,586
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`The Board should expunge the rehearing request because Petitioner has not
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`shown good cause for its untimely filing or its failure to seek the Board's
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`authorization before filing its rehearing request 12 days after the deadline.
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`I. Petitioner Has Not Shown Good Cause For Its Untimely Filing
`As the Board notes in the order to show cause, the deadline for Petitioner to
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`file its rehearing request was September 28, 2018. Paper 19 at 2. The response
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`and the supporting declaration (collectively, "the Response") imply that Petitioner
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`timely filed its request on the deadline. Paper 20; Paper 21, ¶¶ 4-6.1 But the
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`"automatic filing confirmation" Petitioner received from the PTAB actually stated
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`"THERE WERE NO DOUCMENTS SUBMITTED WITH THIS REQUEST."
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`Paper 21 at 6, Exhibit A (9/28/2018 PTABE2E_System email). This should have
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`alerted Petitioner that its filing was defective and ineffective. The Response does
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`not explain why Petitioner did not immediately correct the filing given the notice.
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`The Response does not assert, let alone provide any evidence, that the failure
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`to attach the request was due to E2E system malfunctioning. Paper 20. But even if
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`E2E system malfunctioning had caused the problem, Petitioner should have
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`emailed the Board explaining the situation and requested an extension, followed by
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`1 Paper 21 should have been filed as an exhibit.
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`- 1 -
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`Case IPR2018-00274
`Patent 7,834,586
`a later-filed motion requesting acceptance of the submission once PTAB E2E
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`became available. See answers to "PTAB E2E Frequently Asked Questions" A2
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`and A3 at https://www.uspto.gov/patents-application-process/patent-trial-and-
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`appeal-board/ptab-e2e-frequently-asked-questions. Petitioner did not do so and
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`has provided no reason why it did not follow the established procedure.
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`The Response is also silent on when Petitioner first became aware of the
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`missing attachment or why it waited until October 10, 2018 to submit the rehearing
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`request. Papers 20; Paper 21, ¶¶ 9-11. Instead, the Response merely states that
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`Petitioner received a telephone message from the Board about the missing
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`attachment, without explaining when this message was received or how long
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`Petitioner had waited before acting in response to the message. Id. This apparent
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`lack of diligence is insufficient to justify the delay in filing.
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`The Response does not contend that the rehearing request was uploaded to
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`the E2E system by September 28, 2018. Instead, it implies that the Board should
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`accept the untimely filing because Patent Owner was served a copy of the
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`rehearing request by the deadline. Papers 20; Paper 21, ¶¶ 7-8. But the rule states
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`"[a]ny [rehearing] request must be filed . . . [w]ithin 30 days of the entry . . . of a
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`decision not to institute a trial." 37 C.F.R. § 42.71(d). That is, the deadline is
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`based on filing, not serving, of the request. This makes sense: unlike the
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`institution decision where Patent Owner's Preliminary Response may affect the
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`- 2 -
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`Case IPR2018-00274
`Patent 7,834,586
`outcome, Patent Owner generally plays no role in how the Board decides a
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`rehearing request. Hence, serving Patent Owner a copy of the request does not
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`advance the action and does not excuse Petitioner's otherwise late filing.
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`II. Petitioner Has Failed To Show Any Reason For Filing The Rehearing
`Request After The Deadline Without The Board's Prior Authorization
`The Response does not assert that Petitioner attempted to obtain the Board's
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`authorization before its late filing on October 10, 2018. Rather, Petitioner just
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`uploaded the request on October 10, 2018 and hoped that the Board would accord
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`it with a filing date of September 28, 2018. The proper procedure when Petitioner
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`noticed a defective filing, however, was for Petitioner to show "good cause" and to
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`request that the Board exercise its discretion to waive the regulatory deadline and
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`allow Petitioner to file the rehearing request outside of the time provided by 37
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`C.F.R. § 42.71(d)(2) "in the interests of justice." 37 C.F.R. § 42.5(c)(3); H&S Mfg.
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`Co., Inc. v. Oxbo Int'l Corp., IPR2016-00950, Paper 11 at 2 (PTAB, Dec. 7, 2016)
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`(denying Petitioner's request to file an untimely rehearing request). Petitioner does
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`not explain why it did not follow this established procedure. Nor has Petitioner
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`shown any good cause for the Board to grant any relief in the interests of justice.
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`In sum, the Board should expunge the untimely rehearing request.
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`Dated: October 23, 2018
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`Respectfully submitted,
`/Hong Zhong/
`
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`H. Annita Zhong, Reg. No. 66,530
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`- 3 -
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`Case IPR2018-00274
`Patent 7,834,586
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on October 23,
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`2018, a copy of the foregoing documents OPPOSITION TO PETITIONER'S
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`RESPONSE TO ORDER TO SHOW CAUSE were served by electronic mail, as
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`agreed to by the parties, upon the following:
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` MCDERMOTT WILL & EMERY
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`Charles M. McMahon
`cmcmahon@mwe.com
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`Brian A. Jones
`bajones@mwe.com
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`Thomas DaMario
`tdamario@mwe.com
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`/Susan M. Langworthy/
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`Susan Langworthy
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`- 4 -
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