`571-272-7822
`
`Paper 8
`Date: November 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`On November 4, 2020, Patent Owner requested a conference call
`seeking an extension of time to file its Preliminary Response under 37
`C.F.R. § 42.5(c). Ex. 3001. Patent Owner requests authorization to file a
`motion to extend the deadline for filing its Preliminary Response from
`November 17, 2020 to December 4, 2020, due to late-arising scheduling
`conflicts. Id. Patent Owner indicated that Petitioner opposed the request.
`Id.
`
`On November 6, 2020, a conference call between respective counsel
`for the parties and Judges Szpondowski, Deshpande, and Anderson. During
`the call, Patent Owner argued that it requests the extension due to conflicts
`and overlapping deadlines with its attorneys’ schedules, including a hearing
`in unrelated IPR2019-00143 that is scheduled for November 18, 2020, as
`well as various briefing and other matters in related district court matters and
`at the Federal Circuit. Patent Owner stated that these conflicts and
`overlapping deadlines affect its counsel of record in this case. Patent Owner
`expressed that the requested two and a half week extension should not have
`any impact on the schedule or result in any prejudice to Petitioner. Patent
`Owner also indicated that it would be amendable to a shorter extension, but
`selected two and a half weeks in part due to the upcoming Thanksgiving
`holiday. Patent Owner represented that it does not intend for the extension
`to impact its positions on the exercise of discretion to deny institution based
`on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). Rather, Patent Owner indicates that it, if it
`chooses to argue in favor of exercising discretion to deny based on a holistic
`evaluation of the Fintiv factors, it would argue the timing based on the
`original schedule.
`
`2
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`Petitioner opposes the extension for several reasons, including: (1)
`there are no extraordinary circumstances present here, just normal litigation
`deadlines; (2) the Petition was expeditiously filed in an effort to ensure any
`inter partes review took precedence over the related district court matter;
`and (3) Patent Owner has known since August about the upcoming hearing
`in IPR2019-00143 and only waited until now to raise the issue. Petitioner
`also expressed that it intends to seek a stay in the related district court
`matter, as well as to withdraw its overlapping invalidity claims in the related
`district court matter, if inter partes review is instituted. See Petition at 7.
`Under 37 C.F.R. § 42.5(c)(1), we may modify the default times set by
`rules, including the default time for Patent Owner to file its Preliminary
`Response under 37 C.F.R. § 42.107(b). We acknowledge Petitioner’s
`arguments, but are not persuaded of prejudice to Petitioner or meaningful
`impact to the schedule or in the related district court matter if we grant the
`extension. Further, in light of the intervening Thanksgiving holiday, we are
`inclined to grant Patent Owner’s requested two and a half week extension,
`rather than a shorter extension. Therefore, based on these particular
`circumstances, we are satisfied that Patent Owner has shown good cause for
`the requested extension. See 37 C.F.R. § 42.5(c). Accordingly, Patent
`Owner’s request for extension is granted. No further extensions will be
`granted.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the due date for Patent Owner’s Preliminary
`Response is extended to December 4, 2020.
`
`
`
`3
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`PETITIONER:
`Brian Nash
`Evan Finkel
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`brian.nash@pillsburylaw.com
`evan.finkel@pillsburylaw.com
`
`Matthew Hindman
`matt.hindman@gmail.com
`
`PATENT OWNER:
`Jay Kesan
`DiMuroGinsberg PC - DGKEYIP GROUP
`jay@jaykesan.com
`
`Ari Rafilson
`SHORE CHAN DEPUMPO LLP
`arafilson@shorechan.com
`
`
`4
`
`
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