`U.S. Patent No. 9,219,780
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioners
`
`
`v.
`
`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01269
`U.S. Patent 9,219,780
`
`
`
`
`
`
`
`
`__________________
`
`
`SynKloud Technologies, LLC’s Unopposed Motion To Excuse Late Action
`
`
`
`
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`I. Introduction
`
`Patent Owner, SynKloud Techologies, LLC (“SynKloud”) hereby
`
`respectfully asks the Board to excuse Patent Owner’s late filing of the Patent
`
`Owner’s Response. Petitioners do not oppose this motion.
`
`Three IPRs were filed against Patent No. 9,219,780 (“the ‘780 patent”):
`
`IPR2020-01301, IPR2020-01269, and IPR2020-01270. Patent Owner’s counsel
`
`inadvertently entered the due date for the Patent Owner Response for
`
`IPR2020-01301 (July 1, 2021) in his docket for IPR2020-01269 and IPR2020-
`
`01270. Exhibit 2040, ¶¶ 4 and 5. According to the Scheduling Order for
`
`IPR2020-01269 and IPR2020-01270, the due date was June 30, 2021. As a
`
`result of the docketing error, Patent Owner filed the Patent Owner Response
`
`on July 1, 2021, one (1) day after the due date. Id. at ¶¶ 4-6.
`
`Patent Owner’s counsel notified the Board of the unintentional error via
`
`email on July 2, 2021 (Exhibit 2041) and the Board authorized Patent Owner
`
`to file this motion via email on July 11, 2021 (Exhibit 2042). Exhibit 2040, ¶¶
`
`7, 8.
`
`“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). Patent Owner respectfully submits, for the
`
`
`
`1
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`reasons explained in detail below, that the late action should be excused for
`
`good cause and the interests of justice.
`
`II. The Board Should Excuse Patent Owner’s Late Filing Due To The
`Presence Of Good Cause
`
`The determination of whether a party’s neglect is excusable “is at bottom
`
`an equitable one, taking account of all relevant circumstances surrounding the
`
`party’s omission.” Pioneer Investment Services Co. v. Brunswick Associated Ltd.
`
`Partnership, 507 U.S. 380, 395 (1993). In determining whether to allow late
`
`filings, courts consider various factors including “the danger of prejudice to the
`
`[non-moving party], the length of the delay and its potential impact on judicial
`
`proceedings, the reason for the delay, including whether it was within the
`
`reasonable control of the movant, and whether the movant acted in good
`
`faith.” Ibid.
`
`As supported by the declaration (Exhibit 2040) of Gregory Gonsalves
`
`(SynKloud’s lead counsel in this IPR), SynKloud’s tardiness was the result of a
`
`docketing error. SynKloud’s counsel unintentionally and inadvertently entered
`
`on his docket for IPR2020-01269 and -01270 the due date for the Patent Owner
`
`Response for a different IPR (2020-01301) that was also filed against the ‘780
`
`patent (July 1, 2021). Exhibit 2040, ¶¶ 4-5. The due date for IPRs 2020-01269
`
`and -01270 was, in fact, one day earlier on June 30, 2021. Id. at ¶ 5.
`
`
`
`2
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`SynKloud’s lead counsel was unaware of the mistake until he was
`
`informed by his backup counsel around 3 pm on July 1st. Id. at ¶¶ 4-5.
`
`Immediately thereafter, SynKloud’s counsel began assembling for filing the
`
`Patent Owner Response along with about 35 associated exhibits and a motion
`
`to seal for each of the two IPRs. SynKloud’s lead counsel also left a voice mail
`
`with Petitioners’ lead counsel informing him of the unintentional error. Id. at
`
`¶ 6. SynKloud’s lead counsel completed the filings for IPR2020-01269 and
`
`01270 by 6 pm on July 1st and uploaded service copies of all the filed
`
`documents to a shared folder on his Box account by 6:50 pm on July 1st and
`
`Petitioners’ counsel’s Sharefile storage later that evening. Id. at ¶ 6. Shortly
`
`thereafter, two large trees fell due to a violent storm and knocked down power
`
`lines into the driveway of SynKloud’s lead counsel’s house, thereby cutting
`
`power and internet cable to the house. Id. at ¶ 7. After the firemen and power
`
`company workers had cleared the downed power lines to make it safe to leave
`
`the house the following day on July 2nd, SynKloud’s lead counsel drove to a
`
`library that had internet access, sent an email to Petitioners’ counsel following
`
`up on his voice mail message to ask if Petitioners would oppose SynKloud’s
`
`request to the Board to excuse the late filing, and after receiving a response,
`
`sent an email to the Board reporting the unintentional error and asking the
`
`Board to excuse the late filing. Id. at ¶ 7.
`
`
`
`3
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`The first Pioneer factor supports the requested relief because there is no
`
`prejudice to Petitioners. Petitioners and Patent Owner have agreed to extend
`
`the due date for Petitioners’ Reply by two days to address any impact arising
`
`from Patent Owner’s late filing.
`
`The second Pioneer factor also supports relief because less than one (1)
`
`day passed between the July 30th deadline and the filing of the Patent Owner
`
`Response and associated documents the following day. Allowing the
`
`proceeding to move forward on the merits does not affect any deadline in this
`
`IPR after Petitioners’ Reply.
`
`The third and final Pioneer factor also favors relief because SynKloud’s
`
`error was unintentional and because SynKloud acted in good faith. After
`
`learning of his error, SynKloud’s counsel promptly began the process of filing
`
`and serving the Patent Owner Responses and associated exhibits, asked
`
`Petitioners’ counsel if they would oppose a request to the Board to excuse the
`
`late filing, and notified the Board of the error. Exhibit 2040, ¶¶ 5-7.
`
`Under similar circumstances, the Director applied the Pioneer factors to
`
`excuse a late filing. See e.g., Mitsubishi Cable Industr., Ltd. et. al. v. Goto Denshi
`
`Co., Ltd., IPR2015-01108, Paper 28 (May 3, 2017), p. 13 (finding good cause to
`
`grant a 7-day extension where “good faith conduct [by Patent Owner’s attorneys]
`
`
`
`4
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`… weighs in favor of granting the relief” and “there was no evidence of
`
`prejudice”).
`
`For these reasons, there is good cause for the Board to excuse the late
`
`filing.
`
`III. The Board Should Consider This IPR On The Merits In The Interests
`of Justice.
`
`Consideration of the interests of justice provides further support for excusing
`
`Patent Owner’s late filing. Patent Owner has completed a substantial amount of
`
`work to support the patentability of the claims of the ‘780 patent. For IPR2020-
`
`01269, the Patent Owner Response is 78 pages long and has 39 exhibits. The
`
`Patent Owner Response for IPR2020-01270 is 77 pages long and has 39 exhibits.
`
`This extensive argument and evidence should be considered by the Board in ruling
`
`on the patentability of the claims of the ‘780 patent on the merits. Moreover, a
`
`total of 11 IPRs have been filed against the ‘780 and patents that are related to the
`
`‘780 patents. A final decision issued on the merits in the first IPR. Four IPRs are
`
`still pending before the Board. Decisions on the merits in IPR2020-01269 and
`
`01270 should also be made as part of the Board’s overall effort to determine the
`
`patentability of the set of related SynKloud patents.
`
`SynKloud’s counsel acted honestly and in good faith after learning of the
`
`docketing error that led to the late filing. He promptly notified Petitioners’ counsel
`
`and the Board of the late filing to minimize its impact on them and the schedule for
`
`
`
`5
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`the IPRs. Exhibit 2040, ¶¶ 6-7. Counsel for Patent Owner and Petitioners agreed to
`
`extend the due date for Patent Owner’s Response by one day and Petitioners’
`
`Reply by two days. IPR2020-01269, Paper No. 13; IPR2020-01270, Paper No. 12.
`
`None of the subsequent dates in the schedule for these two IPRs are changed.
`
`Under similar circumstances, the Board excused a late filing. See e.g.,
`
`Square, Inc. v. Electronic Receipts Delivery Systems, LLC, CBM2020-00015,
`
`Paper 23 (P.T.A.B. April 21, 2021) (granting 60-day extension for Patent Owner
`
`Response “because consideration of the Patent Owner Response on the merits
`
`would be in the interests of justice”).
`
`
`
`IV. Conclusion
`
`For all the reasons expressed above, Patent Owner respectfully asks the
`
`Board to adopt the modified schedule that has already been agreed to by
`
`Patent Owner and Petitioners as follows:
`
`Patent Owner Response
`
`Petitioners’ Reply
`
`All other dates
`
`
`
`
`
`
`
`Date: July 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`July 1, 2021
`
`September 24, 2021
`
`unchanged
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`By: /s/ Gregory J. Gonsalves
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email: gonsalves@capitoliplaw.com
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. §§ 42.6(e), this is to certify that I caused an electronic
`
`copy of the foregoing SynKloud Technology LLC’s Unopposed Motion To
`
`Excuse Late Action and its exhibits to be served on the Petitioners’ lead and
`
`backup counsel listed below by filing in the Patent Review Processing System
`
`and by email to the following email addresses:
`
`Lead Counsel
`
`Joseph A. Micallef
`Reg. No. 39,772
`iprnotices@sidley.com
`jmicallef@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
`
`Backup Counsel
`
`Scott M. Border
`Reg. No. 77,744
`sborder@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8818
`
`Date: July 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: _/Gregory Gonsalves_____
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`
`8
`
`