IPR2020-01270
`U.S. Patent No. 9,219,780
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`MICROSOFT CORPORATION and HP INC.,
`Petitioners
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`v.
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` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
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`
`Case IPR2020-01270
`U.S. Patent 9,219,780
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`__________________
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`SynKloud Technologies, LLC’s Unopposed Motion To Excuse Late Action
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`U.S. Patent No. 9,219,780
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`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 IPR2020-01270
`U.S. Patent 9,219,780
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`__________________
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`SynKloud Technologies, LLC’s Unopposed Motion To Excuse Late Action
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`I. Introduction
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`Patent Owner, SynKloud Techologies, LLC (“SynKloud”) hereby
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`respectfully asks the Board to excuse Patent Owner’s late filing of the Patent
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`Owner’s Response. Petitioners do not oppose this motion.
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`Three IPRs were filed against Patent No. 9,219,780 (“the ‘780 patent”):
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`IPR2020-01301, IPR2020-01269, and IPR2020-01270. Patent Owner’s counsel
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`inadvertently entered the due date for the Patent Owner Response for
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`IPR2020-01301 (July 1, 2021) in his docket for IPR2020-01269 and IPR2020-
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`01270. Exhibit 2040, ¶¶ 4 and 5. According to the Scheduling Order for
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`IPR2020-01269 and IPR2020-01270, the due date was June 30, 2021. As a
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`result of the docketing error, Patent Owner filed the Patent Owner Response
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`on July 1, 2021, one (1) day after the due date. Id. at ¶¶ 4-6.
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`Patent Owner’s counsel notified the Board of the unintentional error via
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`email on July 2, 2021 (Exhibit 2041) and the Board authorized Patent Owner
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`to file this motion via email on July 11, 2021 (Exhibit 2042). Exhibit 2040, ¶¶
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`7, 8.
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`“A late action will be excused on a showing of good cause or upon a
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`Board decision that consideration on the merits would be in the interests of
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`justice.” 37 C.F.R. § 42.5(c). Patent Owner respectfully submits, for the
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`1
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`reasons explained in detail below, that the late action should be excused for
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`good cause and the interests of justice.
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`II. The Board Should Excuse Patent Owner’s Late Filing Due To The
`Presence Of Good Cause
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`The determination of whether a party’s neglect is excusable “is at bottom
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`an equitable one, taking account of all relevant circumstances surrounding the
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`party’s omission.” Pioneer Investment Services Co. v. Brunswick Associated Ltd.
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`Partnership, 507 U.S. 380, 395 (1993). In determining whether to allow late
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`filings, courts consider various factors including “the danger of prejudice to the
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`[non-moving party], the length of the delay and its potential impact on judicial
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`proceedings, the reason for the delay, including whether it was within the
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`reasonable control of the movant, and whether the movant acted in good
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`faith.” Ibid.
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`As supported by the declaration (Exhibit 2040) of Gregory Gonsalves
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`(SynKloud’s lead counsel in this IPR), SynKloud’s tardiness was the result of a
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`docketing error. SynKloud’s counsel unintentionally and inadvertently entered
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`on his docket for IPR2020-01269 and -01270 the due date for the Patent Owner
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`Response for a different IPR (2020-01301) that was also filed against the ‘780
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`patent (July 1, 2021). Exhibit 2040, ¶¶ 4-5. The due date for IPRs 2020-01269
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`and -01270 was, in fact, one day earlier on June 30, 2021. Id. at ¶ 5.
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`2
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`SynKloud’s lead counsel was unaware of the mistake until he was
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`informed by his backup counsel around 3 pm on July 1st. Id. at ¶¶ 4-5.
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`Immediately thereafter, SynKloud’s counsel began assembling for filing the
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`Patent Owner Response along with about 35 associated exhibits and a motion
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`to seal for each of the two IPRs. SynKloud’s lead counsel also left a voice mail
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`with Petitioners’ lead counsel informing him of the unintentional error. Id. at
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`¶ 6. SynKloud’s lead counsel completed the filings for IPR2020-01269 and
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`01270 by 6 pm on July 1st and uploaded service copies of all the filed
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`documents to a shared folder on his Box account by 6:50 pm on July 1st and
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`Petitioners’ counsel’s Sharefile storage later that evening. Id. at ¶ 6. Shortly
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`thereafter, two large trees fell due to a violent storm and knocked down power
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`lines into the driveway of SynKloud’s lead counsel’s house, thereby cutting
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`power and internet cable to the house. Id. at ¶ 7. After the firemen and power
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`company workers had cleared the downed power lines to make it safe to leave
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`the house the following day on July 2nd, SynKloud’s lead counsel drove to a
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`library that had internet access, sent an email to Petitioners’ counsel following
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`up on his voice mail message to ask if Petitioners would oppose SynKloud’s
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`request to the Board to excuse the late filing, and after receiving a response,
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`sent an email to the Board reporting the unintentional error and asking the
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`Board to excuse the late filing. Id. at ¶ 7.
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`3
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`The first Pioneer factor supports the requested relief because there is no
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`prejudice to Petitioners. Petitioners and Patent Owner have agreed to extend
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`the due date for Petitioners’ Reply by two days to address any impact arising
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`from Patent Owner’s late filing.
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`The second Pioneer factor also supports relief because less than one (1)
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`day passed between the July 30th deadline and the filing of the Patent Owner
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`Response and associated documents the following day. Allowing the
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`proceeding to move forward on the merits does not affect any deadline in this
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`IPR after Petitioners’ Reply.
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`The third and final Pioneer factor also favors relief because SynKloud’s
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`error was unintentional and because SynKloud acted in good faith. After
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`learning of his error, SynKloud’s counsel promptly began the process of filing
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`and serving the Patent Owner Responses and associated exhibits, asked
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`Petitioners’ counsel if they would oppose a request to the Board to excuse the
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`late filing, and notified the Board of the error. Exhibit 2040, ¶¶ 5-7.
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`Under similar circumstances, the Director applied the Pioneer factors to
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`excuse a late filing. See e.g., Mitsubishi Cable Industr., Ltd. et. al. v. Goto Denshi
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`Co., Ltd., IPR2015-01108, Paper 28 (May 3, 2017), p. 13 (finding good cause to
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`grant a 7-day extension where “good faith conduct [by Patent Owner’s attorneys]
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`4
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`… weighs in favor of granting the relief” and “there was no evidence of
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`prejudice”).
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`For these reasons, there is good cause for the Board to excuse the late
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`filing.
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`III. The Board Should Consider This IPR On The Merits In The Interests
`of Justice.
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`Consideration of the interests of justice provides further support for excusing
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`Patent Owner’s late filing. Patent Owner has completed a substantial amount of
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`work to support the patentability of the claims of the ‘780 patent. For IPR2020-
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`01269, the Patent Owner Response is 78 pages long and has 39 exhibits. The
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`Patent Owner Response for IPR2020-01270 is 77 pages long and has 39 exhibits.
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`This extensive argument and evidence should be considered by the Board in ruling
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`on the patentability of the claims of the ‘780 patent on the merits. Moreover, a
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`total of 11 IPRs have been filed against the ‘780 and patents that are related to the
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`‘780 patents. A final decision issued on the merits in the first IPR. Four IPRs are
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`still pending before the Board. Decisions on the merits in IPR2020-01269 and
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`01270 should also be made as part of the Board’s overall effort to determine the
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`patentability of the set of related SynKloud patents.
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`SynKloud’s counsel acted honestly and in good faith after learning of the
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`docketing error that led to the late filing. He promptly notified Petitioners’ counsel
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`and the Board of the late filing to minimize its impact on them and the schedule for
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`5
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`the IPRs. Exhibit 2040, ¶¶ 6-7. Counsel for Patent Owner and Petitioners agreed to
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`extend the due date for Patent Owner’s Response by one day and Petitioners’
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`Reply by two days. IPR2020-01269, Paper No. 13; IPR2020-01270, Paper No. 12.
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`None of the subsequent dates in the schedule for these two IPRs are changed.
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`Under similar circumstances, the Board excused a late filing. See e.g.,
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`Square, Inc. v. Electronic Receipts Delivery Systems, LLC, CBM2020-00015,
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`Paper 23 (P.T.A.B. April 21, 2021) (granting 60-day extension for Patent Owner
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`Response “because consideration of the Patent Owner Response on the merits
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`would be in the interests of justice”).
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`IV. Conclusion
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`For all the reasons expressed above, Patent Owner respectfully asks the
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`Board to adopt the modified schedule that has already been agreed to by
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`Patent Owner and Petitioners as follows:
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`Patent Owner Response
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`Petitioners’ Reply
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`All other dates
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`Date: July 14, 2021
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`July 1, 2021
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`September 24, 2021
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`unchanged
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`Respectfully Submitted,
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`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
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. §§ 42.6(e), this is to certify that I caused an electronic
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`copy of the foregoing SynKloud Technology LLC’s Unopposed Motion To
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`Excuse Late Action and its exhibits to be served on the Petitioners’ lead and
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`backup counsel listed below by filing in the Patent Review Processing System
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`and by email to the following email addresses:
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`Lead Counsel
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`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
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`Backup Counsel
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`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
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`Date: July 14, 2021
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`By: _/Gregory Gonsalves_____
`Dr. Gregory Gonsalves
`Reg. No. 43,639
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`8
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