`571.272.7822
`
`
`
`
` Paper No. 11
`Filed: March 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AXIS COMMUNICATIONS AB, CANON INC.,
`and CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Cases IPR2019-00235, IPR2019-002361
`Patent 7,868,912 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues in both above-referenced proceedings. We
`exercise our discretion to issue a single order in these two proceedings for
`convenience. The parties, however, are not authorized to use this style
`heading for any subsequent papers.
`
`
`
`IPR2019-00235, IPR2019-00236 (Patent 7,868,912 B2)
`
`
`I. DISCUSSION
`Patent Owner’s Preliminary Responses in IPR2019-00235 and
`IPR2019-00236 were due to be filed no later than March 6, 2019. In an
`email to the Board dated March 7, 2019, Patent Owner states that some of
`the documents filed in IPR2019-00235 were not processed and inputted into
`the system until 12:01AM EST and that some of the documents in filed in
`IPR2019-00236 were not processed and inputted into the system until 12:08
`EST.2 Ex. 3001. Patent Owner requests that the Board accept for filing the
`late-filed documents, or in the alternative, extend Patent Owner’s deadline
`for filing the Preliminary Response in each case by one day.
`A late filing will be excused either upon a showing of good cause or
`upon a Board decision that consideration on the merits of the matter
`addressed in the late filing would be in the interests of justice. See 37 C.F.R.
`§ 42.5(c)(3) (“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.”).
`We are persuaded that the interests of justice would be served by
`considering the merits of Patent Owner’s Preliminary Response. Petitioner
`does not oppose Patent Owner’s request. See Ex. 3001. Given that the delay
`in filing was less than 10 minutes, the prejudice to Petitioner, if any, from
`considering the late-filed documents would be slight. The prejudice to
`
`
`2 A review of PTAB-E2E shows that: (1) in IPR2017-00235, the Preliminary
`Response and Exhibits 2004–2009 were timely filed on March 6, 2019, but
`Exhibits 2010–2011 were not filed until March 7, 2019 and (2) in
`IPR201007-00236, Exhibit 2004 was timely filed on March 6, 2019, but the
`Preliminary Response and Exhibits 2005–2011 were not filed until March 7,
`2019.
`
`2
`
`
`
`IPR2019-00235, IPR2019-00236 (Patent 7,868,912 B2)
`
`Patent Owner from striking the Preliminary Responses or associated
`exhibits, on the other hand, would be significant, because Patent Owner
`would lose its opportunity to argue against the institution of an inter partes
`review. Additionally, institution decisions that consider Patent Owner’s
`arguments will benefit both parties by providing clarity as to the Board’s
`view of the evidence and arguments.
`Accordingly, under the facts presented and for the foregoing reasons,
`we determine that consideration on the merits of Patent Owner’s late-filed
`documents would be in the interest of justice and, therefore, Patent Owner’s
`late filing is excused under § 42.5(c)(3).
`The parties are cautioned, however, that the Board expects
`compliance in the future with all deadlines.
`II. ORDER
`
`It is hereby
`ORDERED that, pursuant to 37 C.F.R. § 42.5(c)(3), the consideration
`of the merits of the Preliminary Response and associated Exhibits in each of
`the above referenced proceedings is in the interests of justice; and
`FURTHER ORDERED that Patent Owner’s late filing of Exhibits
`2010–2011 in IPR2019-00235 is excused; and
`FURTHER ORDERED that Patent Owner’s late filing of its
`Preliminary Response and Exhibits 2005–2011 in IPR2019-00236 is
`excused.
`
`
`3
`
`
`
`IPR2019-00235, IPR2019-00236 (Patent 7,868,912 B2)
`
`For PETITIONER:
`AXIS COMMUNICATIONS AB
`C. Gregory Gramenopoulos
`Jessica L.A. Marks
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`gramenoc@finnegan.com
`jessica.marks@finnegan.com
`
`CANON INC. AND CANON U.S.A., INC.
`Joseph A. Calvaruso
`Richard F. Martinelli
`Orrick, Herrington & Sutcliffe LLP
`jcalvaruso@orrick.com
`rfmptabdocket@orrick.com
`
`For PATENT OWNER:
`
`Eugene Goryunov
`Michael Dokhanchy
`KIRKLAND & ELLIS LLP
`egoryunov@kirkland.com
`Reza.dokhanchy@kirkland.com
`
`
`
`
`
`4
`
`
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