`571-272-7822
`
`Paper 10
`Entered: December 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
`NETWORK SERVICESINC., VERIZON SERVICES CORP., TIME
`WARNERCABLEINC., ICONTROL NETWORKS,INC., and
`COXCOM, LLC
`Petitioner,
`
`V.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01486
`Patent 6,549,130 B1
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`I.
`
`INTRODUCTION
`
`Petitioner, Terremark North America LLC, Verizon Business
`
`Network Services Inc., Verizon Services Corp., Time Warner Cable Inc.,
`
`iControl Networks, Inc., and Coxcom, LLC,filed a Petition requesting an
`inter partes review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149
`
`of U.S. Patent No. 6,549,130 B1 (Ex. 1001, “the ?130 patent”). Paper 1
`|
`(“Pet.”). In addition, on August 5, 2015, Petitioner filed a Motion to
`Recognize June 23, 2015, as the filing date. Paper 6 (“Motion”). On August
`
`19, 2015, in response to Petitioner’s Motion, Patent Owner, Joao Control &
`
`Monitoring Systems, LLC,filed Patent Owner’s Opposition to Motion to
`
`Recognize June'23 as the filing date. Paper 7. Patent Ownerfiled a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). We havejurisdiction
`
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`
`be instituted “unless .
`
`.
`
`. the information presented in the petition .
`
`.
`
`. shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challengedin the petition.”
`
`For the reasonsset forth below, we determinethat the Petition was not
`
`filed timely within the statutory period of 35 U.S.C. § 315(b). We, thus,
`
`deny inter partes review ofthe ’130 patent.
`
`A. Identifying the Petitioner
`Petitioner presents variouslists of petitioning parties throughout the
`Petition. The Petition lists Terremark North America LLC, Verizon
`
`Business Network Services Inc., Verizon Services Corp., Time Warner
`
`Cable Inc., iControl Networks, Inc., and Coxcom, LLC in the caption of the
`
`2
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`
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`IPR2015-01486
`Patent 6,549,130 Bl
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`‘Petition andin the “[rJeal party-in-interest” section. Pet. 1. Five entities,
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`CoxCom, LLC, Terremark North America LLC, Verizon Communications
`
`Inc., Time Warner Cable, Inc., and iControl Networks, Inc. are identified in
`
`the Petition as Petitioners in the “[l]ead and back-up counsel”section. Pet.
`
`4-5.
`
`Verizon Communications Inc., Verizon Corporate Resources Group
`
`LLC, and Verizon Data Services LLC are identified in the Petition as real
`
`parties-in-interest. Pet. 2. Petitioner notes that Verizon Communications
`
`Inc. has more than 500affiliated entities and states that “each of these
`
`entities agrees to be estopped underthe provisions of 35 U.S.C. §§ 315
`and/or 325 asaresult of any final written decision in the requested IPR to
`
`the same extent that the Petitioners are estopped.” On this record, we
`construe any mismatch between the namedVerizonentities to bea
`typographicalerror.
`
`BecausePetitioner identifies five entities, CoxCom, LLC, Terremark
`
`North America LLC, Verizon Communications Inc., Time Warner Cable,
`Inc., and iControl Networks,Inc. as Petitioners in the “[lJead and back-up
`
`counsel”section (id.), and, as stated supra, any mismatch between the
`
`named Verizon entities (e.g., Verizon Communications Inc., Verizon
`
`Business Network Services, and Verizon Services Corp.) is a typographical
`
`error, we construe any mismatch betweenthe caption of the Petition, the
`“[rjeal party-in-interest” section, and the “[l]ead and back-up counsel”
`section to be a typographicalerror.
`
`We,thus, identify Petitioner as Terremark North America LLC,
`
`Verizon CommunicationsInc., Verizon Services Corp., Verizon Business
`
`3
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`IPR2015-01486
`Patent 6,549,130 Bl
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`Network Services, Time Warner Cable Inc., iControl Networks, Inc., and
`Coxcom, LLC.
`
`B. Related Matters
`
`Petitioner indicates that the ’130 patent has been asserted in the
`
`following proceedings:
`
`(1) Joao v. LifeShield, Inc., No. 2-15-cv-02772
`
`(E.D.Pa.); (2) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.);
`(3) Joao v. Cox Communications, Inc., No. 1-14-cv-00520 (D. Del.);
`(4) Joao v. Volkswagen Group ofAmerica, Inc., No. 1-14-cv-00517 (D.
`Del.); (5) Joao v. DISH Network Corp., No. 1-14-cv-00522 (D. Del.);
`
`(6) Joao v. Cablevision Systems Corp., No 1-14-cv-00518 (D. Del.);
`
`(7) Joao v. Consolidated Edison, Inc., No. 1-14-cv-00519 (D. Del.); (8) Joao
`
`v. Verizon Communications, Inc., No. 1-14-cv-00525 (D. Del.); (9) Joao v.
`
`Time Warner Cable, Inc., No. 1-14-cv-00524 (D. Del.); (10) Joao v.
`
`DirecTV, No. 1-14-cv-00521 (D. Del.); (11) Joao v. Nissan North America,
`
`Inc., No. 1-14-cv-00523 (D. Del.); (12) Alarm.com Inc. v. Joao, No. 1-14-
`cv-00284 (D. Del.); (13) Joao v. Protect America, Inc., No. 1-14-cv-00134
`(W.D. Tex.); (14) Joao v. FrontPoint Security Solutions LLC, No. 1-13-cv-
`01760 (D. Del.); (15) Joao v. Chrysler Corp., No. 4-13-cv-13957 (E.D.
`
`Mich.); (16) Joao v. Ford Motor Co., No. 4-13-cv-13615 (E.D. Mich.);
`
`(17) Joao v. Mazda Motor ofAmerica Inc., No. 1-13-cv-00728 (D. Del.);
`
`(18) Joao v. Mitsubishi Motors North America Inc., No. 1-13-cv-00614 (D.
`
`Del.); (19) Joao v. Lowe’s Cos., Inc., No. 5-13-cv-00056 (W.D.N.C.);
`
`(20) Joao v. Jaguar Land Rover North America LLC, No. 1-13-cv-00507 (D.
`Del.); (21) Joao v. Vivint Inc., No. 1-13-cv-00508 (D.Del.); (22) Joao v.
`
`4
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`
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`IPR2015-01486
`Patent 6,549,130 Bl
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`Chrysler Corp., No. 1-13-cv-00053 (S.D.N.Y.); (23) Joao v. Ford Motor
`
`Co., No. 1-12-cv-01479 (D. Del.); (24) Joao v. City of Yonkers, No. 1-12-cv-
`
`07734 (S.D.N.Y.); (25) Joao v. Ford Motor Co., No. 4-12-cv-14004 (E.D.
`Mich.); (26) Joao v. Hyundai Motor America, No. 8-12-cv-00007 (C.D.
`
`Cal.); (27) Joao v. Ford Motor Co., No. 2-12-cv-00033 (C.D. Cal.);
`
`(28) Joao of California, LLC v. Sling Media, Inc., No. 3-11-cv-06277 (C.D.
`
`Cal.); (29) Xanboo Inc. v. Joao of California, No. 8-11-cv-00604 (C.D.
`
`Cal.); (30) Joao of California, LLC v. ACTI Corp., No. 8-10-cv-01909 (C.D.
`
`Cal.); and (31) Joao v. Cenuco, Inc., No. 7-05-cv-01037 (S.D.N.Y.). Pet. 2—
`
`4; Paper5.
`
`According to Patent Owner, the ’130 patentalso is the subject of four
`
`ex parte reexaminations, Reexamination Control Nos.: (1) 90/013,303;
`
`(2) 90/013,301; (3) 90/013,302; and (4) 90/013,300. Paper 5, 5. Petitioner
`
`concurrently filed petitions requesting an inter partes review ofthe
`
`following U.S. Patent Nos.: (1) 6,549,130 (Case IPR2015-01509);
`(2) 6,542,077 B2 (Case IPR2015-01466); (3) 6,587,046 (Case IPR2015-
`
`01477); (4) 7,277,010 (Case IPR2015-01484); (5) 6,542,076 (Case
`
`IPR2015-01478); (6) 7,397,363 (Case IPR2015-01482); (7) 7,397,363 (Case
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`IPR2015-01485); and (8) 6,542,076 (Case IPR2015-01508). Jd. at 4—S.
`
`Il. ANALYSIS
`
`Becauseat least one of the petitioning parties was served with a
`
`complaint on June 23, 2014 (Exs. 2002-2005), the statutory bar date for
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`IPR2015-01486 is June 23, 2015. 35 U.S.C. § 315(b); 37 C.F.R.
`
`§ 42.101(b). Petitioner, however, was accordeda filing date of June 24,
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`5
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`IPR2015-01486
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`2015. Paper 3. Petitioner filed, served, and paid the fee for IPR2015-01486
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`on June 24, 2015, whichis one day after the statutory bar date. Motion 2-5:
`(citing Ex. 1 § 1-12).!
`
`Petitioner contendsthatit is not barred or estopped from requesting an
`
`inter partes review ofthe ’130 patent, thus, satisfying the requirements of
`
`§ 315(b) for the following five reasons: (1) the Patent Review Processing
`System (“PRPS”) “was apparently malfunctioning” whenPetitioner
`repeatedly attempted to upload documents the night of June 23, 2015; (2) the
`
`three petitions (i-e., IPR2015-01482, IPR2015-01485, and IPR2015-01486)
`
`werefiled serially, beginning with IPR2015-01482, to avoid having to
`
`reload any previously submitted exhibits, which caused Petitioner to
`
`complete the filing ofall three cases after June 23, 2015; (3) the Board has
`
`the authority, as demonstrated in past decisions, to recognize thefiling date
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`for this inter partes review as June 23, 2015; (4) there is no prejudice to
`Patent Ownerbecause immediate remedial measures were taken right away
`by Petitioner; and (5) one of the petitioning parties, CoxCom, LLC, was not
`
`served with a complaint until August 18, 2014 andis, thus, not time barred
`
`' Exhibits 1-4,filed by Petitioner with the Motion, do not comply with
`37 C.F.R. § 42.63(c), requiring all exhibits to be separately and uniquely
`numbered within the range of 1001-1999, or 37 C.F.R. § 42.63(d)(1)(ii),
`requiring exhibits not filed with the petition to include “the party’s name,
`followed by a unique exhibit number, the namesofthe parties, and thetrial
`number.” Motion. Petitioner, instead, filed their motion, declarations, and
`all supporting exhibits together as the Motion. To avoid potential for further
`confusion, wetreat the citations to Exhibits 1-4 as though Petitioner had
`identified and filed correct exhibits. We note that Petitioner’s non-
`compliance with these rules is mootin light of our denial of the Motion and
`the Petition.
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`6
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`from filing a petition. Motion 2-9. Wedisagree that Petitioner is not time
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`barred or estopped. Weaddress Petitioner’s argumentsin turn.
`
`A.
`
`Petitioner has not Shown that PRPS was “Apparently
`Malfunctioning”’
`
`Petitions for inter partes review mustbefiled within one yearafter
`
`Petitioner was served with a complaint alleging infringement. 35 U.S.C.
`
`§ 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a
`
`filing date once (1) a petition has beenfiled; (2) payment has been made;
`
`and (3) the complete petition is served on the patent owner. 35 U.S.C.
`
`§ 312(a); 37 C.F.R. § 42.106(a). The Board hasdiscretion to waive non-
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`statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit
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`a party to file a motionto correct a “clerical or typographical mistake.”
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`37 C.F.R. § 42.104(c). The burden of proof rests with the movingparty,
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`whichis, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.
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`It is undisputed that at least two of the petitioning parties were served
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`with a complaint alleging infringement of the ’130 patent on June 23, 2014.
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`Ex. 2001 9§ 1-4; Exs. 2002-2005. On June 23, 2015, Petitioner failed to
`
`comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying
`
`the required fee and failing to meet the requirements of 37 C.F.R.
`§ 42.106(a) by notfiling and serving the Petition and its supporting
`
`evidence. Motion 2—S (citing Ex. 1 Jf 1-12). On June 24, 2015, one day
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`after the one year statutory deadline, Petitioner completed filing of the
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`Petitions at issue. /d. at 3—5 (citing Ex. 1 ff 1-12).
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`
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`IPR2015-01486
`Patent 6,549,130 B1
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`Petitioner alleges that the filings were one day late because of PRPS
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`“apparently malfunctioning.” Motion 2~S. The burdenofproof, as stated
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`supra, rests with Petitioner. Petitioner has not shown persuasively how a
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`series of screenshots illustrating a “pending”status (id. at 3-4 (citing Ex. 1
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`{| 1-12)) demonstrates that PRPS was “apparently malfunctioning.” Put
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`another way,“pending”is a normal status message that shows the document
`is being uploaded. In addition, there are other possible reasons, besides
`PRPSallegedly malfunctioning, why Petitioner was unable to upload their
`documents at the required time such as Petitioner’s network malfunctioning,
`Petitioner’s computer malfunctioning, etc. Moreover, our internal
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`|
`
`investigation confirms that PRPS access on June 23, 2015 was functioning
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`properly.
`Evenif Petitioner was able to show that PRPS was malfunctioning
`with respect to uploading documents, whichit did not, Petitioner has not
`
`shown persuasively why it was unable to serve to Patent Owner and whyit
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`did not pay the filing fee on time. In addition, an alleged PRPS malfunction
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`whenfiling IPR2015-01482 would not prevent having one employee, using
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`a different computer, from uploading the IPR2015-01486 Petition and
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`supporting documents while another employee troubleshot the alleged PRPS
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`malfunction with filing IPR2015-01482.
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`Petitioner, thus, has not shown persuasively howaseries of screen
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`shots and a statement that PRPS was “apparently malfunctioning”justifies
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`.
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`the relief requested.
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`IPR2015-01486
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`B.
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`Petitioner’s Serial Filings did not Prevent Timely Filing
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`AlthoughPetitioner alleges the three petitions (i-e., IPR2015-01482,
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`IPR2015-01485, and IPR2015-01486) were filed in series “to avoid having
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`to reload any previously submitted exhibits” (Motion 4 (citing Ex. 1 § 7)),
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`this argument is not persuasive because PRPSrequires separate uploading
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`and filing of documents for each petition. Petitioner’s filings additionally
`
`undermineits position because Petitioner did not cross-reference earlier-
`
`filed documentsin later-filed petitions, but instead, re-filed numerous
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`duplicative exhibits in each of the three petitions at issue. See, e.g., Ex.
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`1003 in IPR2015-01482, -01485, and -01486; Ex. 1004 in IPR2015-01482, -
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`01485, and 01486. Thus, Petitioner’s argumentthat “the second. .
`
`. and
`
`third petition .
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`.
`
`. could notbefiled until the first filing was completed”
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`(Motion 4) is not persuasive.
`
`Petitioneralso alleges but for PRPS malfunctioning, their counsel
`would have “serve[d] the three petitions and accompanying documents.”
`Ex. 194. Service andfiling, however, are independent events, as
`demonstrated by the fact that Petitioner printed the documents for service
`
`before completing the electronic filing. Jd. 43. Petitioner acknowledges
`
`that there was more than one employeein the office at the time offiling. Jd.
`
`q 4.
`
`Petitioner, thus, has not shown persuasively how the combination of
`
`serial filings, a series of screen shots, and a statement that PRPS was
`apparently malfunctioningjustifies the relief requested.
`
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`The Board’s Prior Decisions are Distinguishable |
`C.
`Petitioner cites a numberof non-precedential Board decisions to
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`support its arguments. These cases, however, are distinguishable because
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`none of them addressed the combinationofa failure to file, serve, and pay
`
`the required fee as set out in our Rules and governingstatute.
`
`In E*Trade Financial Corp. v. Droplets, Inc., Case IPR2015-00470
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`(PTAB Apr. 20, 2015) (Paper 17), the Board addressed a Motion to Change
`
`the Filing Date. In E*Trade, the petitioner received a notice from PRPSthat
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`the system was “currently down” whenthe petitioner attemptedto file the
`
`petition. Moreover, in E*Trade, a Board employee, acting with the authority
`
`of the Board, instructed the petitioner to email its petition and supporting
`
`documents as an attachment. Thepetitioner in E*Trade paid timely the
`
`filing fee, and served timely the petition on the patent owner. The petitioner
`
`in E*Traderefiled the petition and supporting documents when PRPS
`
`functioned properly. The Board granted the motion becauseall three filing
`requirements were met;in particular, the documents were emailed timely,
`fees were paid timely, and the documents were served timely. E*Trade, slip
`
`op. at 3-4.
`
`Regarding ConMed Corp. v. Bonutti Skeletel Innovations LLC, Case
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`IPR2013-00624 (PTAB Mar. 14, 2014) (Paper 22), the Board addressed a
`
`Motion to Correct Filing Date. The petitioner in ConMedpaid timely the
`
`filing fee, and served timely the petition on the patent owner. The petitioner
`
`in ConMedfiled the petition and supporting documents, but because the
`
`petitioner failed to click “Submit” whenfiling those documents, the
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`proceeding was accordeda filing date after the statutory bar. The petitioner
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`in ConMeddid nothit the submit button until several days after the statutory
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`bar date whenit refiled exhibits with the corrected labels. The Board,
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`however, granted the motion primarily becauseall three filing requirements
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`were met; in particular, the documents were uploadedandfiled timely but
`
`for an omissionto click a “Submit” button, fees were paid timely, and the
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`documents were served timely. ConMed,slip op. at 2-6.
`
`Asfor Oracle Corp. v. Maz Encryption Techs. LLC, Case IPR2014-
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`00472 (PTAB May1, 2014) (Paper 9), the Board addressed a Motion to
`Recognize March 1, 2014 as Filing Date. The petitioner in Oracle paid
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`timely the filing fee, and served timely the petition on the patent owner. The
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`petitioner in Oracle was unableto timely file the petition because PRPS was
`
`malfunctioning. The Board, however, granted the motion becauseits
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`“internal investigation confirm[ed] that PRPS access .
`
`.
`
`. was indeed
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`compromised.” Oracle, slip op. at 2.
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`.
`
`In 2Wire, Inc. v. TQ Delta, LLC, Case IPR2015-00239 (PTAB Jan.
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`15, 2015) (Paper 10), the Board addressed a Motion to Correct Filing Date.
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`In 2Wire, counsel pressed the “submit” button after midnight. The Board,
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`however, granted the motion becauseall three filing requirements were met;
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`in particular, the documents were uploaded timely, fees were paid timely,
`
`and the documents were served timely. 2Wire, slip op. at 4-8.
`
`Regarding Micron Tech., Inc. v. e.Digital Corp., Case IPR2015-00519
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`(PTAB Mar. 24, 2015) (Paper 14), the Board addressed a Motion to Deny a
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`Petition a Filing Date based on Improper Service. The petitioner in Micron
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`filed timely the petition, and paid timely the filing fee. In addition, in
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`Micron,the petitioner served a copy ofthe petition and supporting
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`documents on the patent owner’s litigation counsel via email more than two
`weeksprior to expiration of the statutory bar date, and email correspondence
`
`betweenthe parties indicated that the patent owner’s litigation counsel was
`
`in receipt of the documents priorto the statutory bar date. The petitioner in
`
`Micronfailed to timely serve the patent ownerat the correspondence address
`
`of record. The Board, however, denied the patent owner’s motion because
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`the patent owner, throughits litigation counsel, actually received the petition
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`prior to the one year statutory bar date. Micron,slip op. at 4-6.
`
`Asfor ABB Inc. v. Roy-G-Biv Corp., Case IPR2013-00063 (PTAB
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`Jan. 16, 2013) (Paper 21), the Board addressed a Motion to Correct Petition.
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`The petitioner in ABB served timely the petition, and paid timely the filing
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`fee. The petitioner in ABB failed to timely file the correct exhibits. The
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`Board, however, granted the motion based on a finding that although the
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`petitioner filed the wrong exhibits, the petitioner served timely the correct
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`exhibits on the patent owner. ABB,slip op. at 2, 5-11.
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`In Schott Gemtron Corp. v. SSW Holding Co. Inc., Case IPR2014-
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`00367 (PTAB Sept. 22, 2014) (Paper 30), the Board addressed a Motion to
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`Correct Filing Date. The petitioner in Schott served timely the petition, and
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`paid timely the filing fee. In Schott, the petitionerfiled timely an incorrect
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`exhibit. The Board, however, granted the motion becausethe petitioner
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`served timely the petition and supporting documents, which the patent owner
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`acknowledged during a conferencecall. Schott, slip op. at 2-4.
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`Regarding Syntroleum Corp. v. Neste Oil OYJ, Case IPR2013-00178
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`(PTAB July 22, 2013) (Paper 21), the Board addressed a Motion to Correct
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`Petition. The petitioner in Syntroleum paid timely the filing fee. In
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`12
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`\
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`IPR2015-01486
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`Syntroleum,the petitionerfiled timely and served timely the petition, but
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`filed an incorrect reference and served the same incorrect reference. The
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`petitioner in Syntroleum intended to file a published European application,
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`but instead, the petitioner filed inadvertently and served inadvertently a
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`patent that issued from the publication. The Board, however, granted the
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`motion becauseboth thepetitioner’s original petition and declaration cited
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`the published European application. Syntroleum, slip op. at 2-6.
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`Thus, as described above,all of these cases are distinguishable from
`
`the facts currently before us. Petitioner has not directed us to any case
`
`wherethe petitioning party failed to file, serve, and pay the required fee by
`
`the statutory bar date.
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`D._Petitioner’s Arguments Pertaining to a Prejudice to Patent Owneris
`Misplaced
`
`Petitioner contendsthere is no prejudice to Patent Owner because
`
`immediate remedial measures were taken right away by Petitioner. Motion
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`9. Petitioner’s argument, however, is misplaced because the standard for
`permitting a late filing is not dependent solely on whether there was
`
`prejudice to Patent Owner.
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`We,therefore, decline to grant the relief requested.
`
`E.
`
`The Presence of CoxCom, LLC does not Remove the Statutory Bar
`
`Petitioner contendsthat one of the petitioning parties, CoxCom, LLC,
`
`was not served with a complaint until August 18, 2014, andis, thus, not time
`
`barred from filing the Petition. Motion 9. We disagree that Petitioner is not
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`time barred.
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`“An inter partes review may notbeinstituted if the petition requesting
`
`the proceedingis filed more than | year after the date on which the
`
`petitioner, real party in interest, or privy ofthe petitioner is served with a
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`complaint alleging infringement of the patent” (emphasis added). 35 U.S.C.
`
`§ 315(b).
`
`Petitioner acknowledges that Terremark North America LLC, Verizon
`
`Business NetworkServices Inc., Verizon Services Corp., Time Warner
`
`Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon
`
`Communications Inc., Verizon Corporate Resources Group, LLC, and
`
`Verizon Data Services LLC arereal-parties-in-interest. Pet. 1-2. Petitioner
`
`also acknowledges that Terremark North America LLC, Verizon
`
`Communications Inc., and Time Warner Cable Inc. were served with a
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`complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is
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`precludedfor at least the reasons that Terremark North America LLC and
`
`Verizon CommunicationsInc. are real parties-in-interest and were served
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`with a complaint on June 23, 2014. 35 U.S.C. § 315(b).
`
`CoxCom, LLC,is precluded additionally from filing the Petition for
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`other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc.,
`Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board
`
`addressed a Motion of Adverse Judgement against PNC. In PNC Bank,
`
`PNC,one ofthree petitioners, violated 35 U.S.C. § 325(a)(1) byfiling the
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`petition for covered business method review (“CBM”)after it had filed a
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`district court suit challenging the validity of the patent challengedin the
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`CBM.In an attemptto eliminate the statutory bar against PNC, PNC moved
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`for entry of adverse judgmentagainst it in the CBM proceeding and
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`contendedthat other petitioners could proceed with the petition without
`
`further involvement by PNC. The Boarddeniedinstitution on the CBM
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`petition and dismissed the motion because PNCalready had exerted
`
`substantial control over the case, and granting PNC’s request for adverse
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`judgment would not obviate the control that PNC already had exerted. Jd.,
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`slip op.at 4.
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`Similarly, Terremark North America LLC and the named Verizon
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`entities in this case already have exerted substantial control over the case by
`
`participating in filing the Petition, appointing counsel, etc. The presence of
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`CoxCom, LLC, therefore, does not removethe statutory bar.
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`Il. CONCLUSION
`
`For the foregoing reasons,the Petition falls outside the one-year time
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`bar set forth in 35 U.S.C. § 315(b). We, thus, deny inter partes review of
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`the °130 patent.
`
`IV. ORDER
`
`Forthe foregoing reasons,it is
`ORDEREDthatthe Petition is denied as to all challenged claims and
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`notrial is instituted.
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`PETITIONER:
`
`Vaibhav P. Kadaba
`D. Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`wkadaba@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`
`Frank C. Cimino,Jr.
`Megan S. Woodworth
`Venable LLP
`FCCimino@venable.com
`MSWoodworth@venable.com
`
`Jackson Ho
`K&L Gates LLP
`jackson.ho@klgates.com
`
`PATENT OWNER:
`
`Raymond Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`HENINGER GARRISON DAVIS, LLC
`rvazquez@hgdlawfirm.com
`
`16
`
`