`571-272-7822
`
`Paper 23
`
` Entered: November 15, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`
`
`
`
` FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00274
`Patent No. 7,834,586 B2
`____________
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.7
`
`
`
`IPR2018-00274
`Patent 7,834,586 B2
`
`On August 29, 2018, we entered a Decision Denying Institution of
`Inter Partes Review in this case. Paper 17. A request for rehearing of that
`Decision must be filed within 30 days of entry. 37 C.F.R. § 42.71(d)(2). On
`September 28, 2018, Petitioner apparently attempted to file a request for
`rehearing. On October 10, 2018, Petitioner filed a Request for Rehearing.
`Paper 18. On October 15, 2018, we entered an Order to Show Cause
`directing Petitioner to show cause why we should not expunge Paper 18 as
`not timely filed. Paper 19. Petitioner filed its Response to the Order to
`Show Cause on October 18, 2018. (Paper 20, “Resp.”). Petitioner supports
`its response with a Declaration of Charles McMahon. Paper 21. Patent
`Owner filed an Opposition on October 23, 2018 requesting that we expunge
`the Request for Rehearing as untimely. (Paper 22 “Opp.”).
`Petitioner contends that “it timely filed a Request for Rehearing in this
`case on September 28, 2018, and that any delay in filing was due to an
`inadvertent filing error.” Resp. 2. Petitioner directs us to Exhibit A attached
`to the Declaration of Charles McMahon in support of this contention. Id.
`Exhibit A is an email notice from the PTAB E2E filing system dated
`September 28, 2018 captioned “Rehearing Request Filed Notice” and stating
`that “THERE WERE NO DOCUMENTS SUBMITTED WITH THIS
`REQUEST.” McMahon Decl., Ex. A. Petitioner contends that it served a
`copy of the Request for Rehearing on Patent Owner’s counsel on September
`28, 2018. Resp. 2 (citing McMahon Decl. ¶¶ 7–8, Ex. B). Apparently, the
`service copy included documents not filed on PTAB E2E on September 28.
`Id. Petitioner then contends that its “counsel subsequently received a
`telephone message from the Board indicating that the filing was missing an
`attachment” and then “Petitioner re-filed the request for Rehearing,
`
`
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`2
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`IPR2018-00274
`Patent 7,834,586 B2
`
`originally submitted on September 28, 2018.” Id. (citing McMahon Decl. ¶¶
`9–11, Ex. C). Based on this, Petitioner contends that “its Request for
`Rehearing in this case was timely filed and … requests the Board’s
`acceptance thereof.” Id.
` Patent Owner opposes Petitioner’s request that we accept Petitioner’s
`Request for Rehearing filed on October 10, 2018 as timely filed. Patent
`Owner contends that Petitioner has not shown good cause for waiving the
`regulatory deadline for the Request for Rehearing. Opp. 1–3. In particular,
`Patent Owner contends Petitioner has not explained why it did not
`immediately correct the September 28, 2018 filing since the filing notice it
`received from PTAB E2E specifically provided notice that no documents
`were attached to the filing. Id. at 1. Patent Owner also contends that
`Petitioner fails to provide facts to justify the delay from September 28 until
`October 10 and its “apparent lack of diligence is insufficient to justify the
`delay.” Id. at 2. For the following reasons, we excercise our discretion to
`expunge the Request for Rehearing.
`A request for rehearing of a decision not to institute trial “must be
`filed” within 30 days of the entry of the decision. 37 C.F.R. § 42.71
`(d)(2)(emphasis added). Although Petitioner apparently attempted to file its
`Request for Rehearing on September 28, 2018, it did not, in fact, file the
`Request for Rehearing on that date. In addition, it received notice from
`PTAB E2E that no documents were attached to its filing. McMahon Decl.,
`Ex. A. The first time Petitioner filed the Request for Rehearing, in
`compliance with the requirements of 37 C.F.R. § 42.71(d)(2), was on
`October 10, 2018. Paper 18.
`
`
`
`3
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`IPR2018-00274
`Patent 7,834,586 B2
`
`We note that Petitioner did not request an extension of time, under
`37 C.F.R. § 42.5(c)(2), supported by a showing of good cause to file the
`Request for Rehearing after the deadline of September 28, 2018.
`Nonetheless, our rules provide that “[a] late action will be excused 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). In this
`case, Petitioner does not specifically address why there is good cause for the
`Board to accept the late filing or why consideration of the merits of the
`Request for Rehearing would be in the interests of justice. See Resp.,
`passim. Rather, Petitioner merely argues that the “delay in filing was due to
`an inadvertent filing error.” Id. at 1. Petitioner, however, fails to offer any
`facts to explain why it took twelve days to correct the inadvertent filing error
`and why it did so only after being contacted by the Board. See McMahon
`Decl. ¶ 9. Further, Petitioner fails to persuasively explain why an
`inadvertent filing error constitutes good cause. Consequently, we are not
`persuaded that Petitioner has established “good cause” for excusing the late
`filing or that it would be “in the interests of justice” to consider the Request
`for Rehearing on the merits.
`We “may expunge any paper directed to a proceeding … that is not
`authorized under this part.” 37 C.F.R. § 42.7(a). Because we are not
`persuaded that Petitioner has established good cause to excuse the late filing
`and because Petitioner has not persuaded us that it is in the interests of
`justice to consider the Request for Rehearing on the merits, we determine
`that the Request for Rehearing (Paper 18) should be expunged.
`Based on the foregoing, it is hereby:
`
`
`
`4
`
`
`
`IPR2018-00274
`Patent 7,834,586 B2
`
`ORDERED that Petitioner’s Request for Rehearing (Paper 18) is
`expunged.
`
`
`
`
`
`5
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`
`
`IPR2018-00274
`Patent 7,834,586 B2
`
`PETITIONER:
`
`
`Charles M. McMahon
`Brian A. Jones
`Thomas DaMario
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`bajones@mwe.com
`tdamario@mwe.com
`
`PATENT OWNER:
`
`Hong Zhong
`Michael Fleming
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`
`
`
`
`
`
`
`6
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`