UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S MOTION TO CORRECT ELECTRONIC FILING DATE
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S MOTION TO CORRECT ELECTRONIC FILING DATE
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`STATEMENT OF FACTS ........................................................................... 1
`
`(a) Circumstances Surrounding the Electronic Filing of the ’077
`Petition Including Evidence of Technical Problems with the PRPS
`System .......................................................................................................... 1
`(b) Steps Taken Before And After Encountering Technical Problems ............. 4
`
`III.
`
`ARGUMENT ............................................................................................... 5
`
`(a) The Authority of the Board, if Any, to Waive the Statutorily
`Mandated One Year Time Limitation for Filing the Present Case, to
`the Extent Such Time Limitation Applies .................................................... 5
`(b) The Board Should Utilize its Authority to Correct the Electronic
`Filing Date .................................................................................................... 6
`
`IV.
`
`CONCLUSION AND RELIEF REQUESTED ......................................... 10
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00239, Paper 10 (Jan. 15, 2015) ............................................................ 7
`
`ABB Inc. v Roy-G-Biv Corp.,
`IPR2013-00063, Paper 21 (Jan. 16, 2013) .................................................... 7, 8, 9
`
`Conmed Corp. v. Bonutti Skeletal Innovations, LLC,
`IPR2013-00624, Paper 18 (Feb. 21, 2014) ........................................................... 7
`
`CoreLogic, Inc. v. Boundary Solutions, Inc.,
`IPR2015-00226, Paper 34 (Oct. 27, 2015) ......................................................... 10
`
`Ricoh Americas Corp. v. MPHJ Tech. Investments, LLC,
`IPR2013-00302, Paper 32 (Mar. 11, 2014) ........................................................ 10
`
`Schott Gemtron Corp. v. SSW Holding Co.
`IPR2014-00367, Paper 30 (Sept. 22, 2014) .......................................................... 9
`
`Syntroleum Corp. v. Neste Oil OYJ,
`IPR2013-00178, Paper 21 (July 22, 2013) ....................................................... 8, 9
`
`Statutes
`
`35 U.S.C. § 312(a) ................................................................................................. 6, 9
`
`35 U.S.C. § 312(a)(5) ................................................................................................. 9
`
`35 U.S.C. § 315(b) ................................................................................................. 6, 9
`
`Regulations
`
`37 C.F.R. § 42.5(b) ........................................................................................ 1, 6, 7, 9
`
`37 C.F.R. § 42.5(c)(3) .............................................................................................. 10
`
`37 C.F.R. § 42.6(e) ................................................................................................... 10
`
`37 C.F.R. § 42.104(c) ..................................................................................... 1, 6, 7, 9
`
`ii
`
`
`
`Petitioner’s Exhibit List
`Description
`
`
`
`1010
`
`Exhibit
`Number
`1001 U.S. Patent No. 6,199,077 (’077 Patent)
`Summons Returned as Executed , Yodlee, Inc. v. Plaid
`1002
`Technologies, Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del.
`filed December 1, 2014)
`1003 U.S. Patent No. 6,317,783 to Freishtat (the “’783 Patent” or
`“Freishtat”
`1004 Declaration of Dr. Todd Mowry
`1005
`Redline Comparison of U.S. Patent Appl. No. 09/323,598 and
`Application No. 09/208,740
`File History of U.S. Patent No. 6,199,077
`1006
`1007 U.S. Patent No. 6,278,449 (“Sugiarto”)
`1008 U.S. Patent No. 5,892,905 (“Brandt”)
`1009
`Zhao, “Technical Note, WebEntree: A Web Service Aggregator,”
`(1998) (“Zhao”)
`Claim Construction Briefing, Yodlee, Inc. v. Plaid Technologies,
`Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del. filed December
`1, 2014)
`Claim Construction Order, Yodlee, Inc. v. CashEdge, Inc., No. C
`05-01550 SI, slip op. (N.D. Cal., July 7, 2006)
`Provisional Appl. No. 60/105,917 (“the ’917 Application”)
`1012
`Redline Comparison of Provisional Appl. No. 60/105,917 and
`1013
`Screenshot of ACM Digital Library Page
`1014
`1015 U.S. Patent No. 6,029,175 (“Chow”)
`1016 U.S. Patent No. 6,401,118 (“Thomas”)
`1017 U.S. Patent No. 6,006,333 (“Nielsen”)
`1018
`Screenshots of ESPN Pages
`1019 U.S. Patent No. 6,041,362 (“Mears”)
`1020 U.S. Patent 6,243,816 (“Fang”)
`1021 Declaration of Omar Amin
`1022 Declaration of Jill McCormack
`1023
`’077 Petition Filing Receipt
`1024
`Screenshot of Federal Express Tracking Data
`1025
`’077 Petition Payment Receipt
`1026 United States Postal Service, Service Commitments
`iii
`
`1011
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Plaid Technologies, Inc. (“Petitioner”) seeks correction of the
`
`filing date of its Petition for Inter Partes Review in IPR2016-00275 from
`
`December 3, 2015 to December 2, 2015 pursuant to Paper 8 dated February 1,
`
`2016 (“the Order”). Petitioner paid the required fee and uploaded its petition for
`
`Inter Partes review of U.S. Patent No. 6,199,077 (“the ’077 Petition”) on
`
`December 2, 2015 but significant PRPS technical issues and delays and a clerical
`
`error interfered with submission of the filing by midnight. Correction of the filing
`
`date accorded the Petition is requested and warranted here because it is well within
`
`the Board’s authority under 37 C.F.R. § 42.5(b) and § 42.104(c). Petitioner
`
`addresses the three questions from the Order below.
`
`II.
`
`STATEMENT OF FACTS
`
`(a) Circumstances Surrounding the Electronic Filing of the ’077 Petition
`Including Evidence of Technical Problems with the PRPS
`On December 2, 2015, Petitioner’s counsel began filing a Petition for Inter
`
`Partes review of U.S. Patent No. 6,317,783 (“the ’783 Petition”) and a Petition for
`
`Inter Partes Review for U.S. Patent No. 6,199,077 (“the ’077 Petition”), each with
`
`a supporting declaration from Dr. Todd Mowry. Declaration of Omar Amin, Ex.
`
`1021 (“Amin Decl.”) ¶ 2; Declaration of Jill McCormack, Ex. 1022 (“McCormack
`
`Decl.”) ¶ 2; IPR2015-00273, Paper 1 (Dec. 2, 2015). Petitioner began sequentially
`
`
`
`
`
`
`
`filing the petitions, starting with the ’783 Petition at around 10:30 p.m., which
`would have been sufficient time under normal circumstances.1 Amin Decl., Ex.
`1021, ¶ 4; McCormack Decl., Ex. 1022, ¶ 4. The ’783 Petition includes only
`
`thirteen moderately sized exhibits. Amin Decl., Ex. 1021, ¶ 7. Yet, the PRPS
`
`delayed and stalled in uploading those exhibits, taking far longer than normal.
`
`Amin Decl., Ex. 1021, ¶¶ 7–8. Some exhibits took a few minutes to upload. Amin
`
`Decl., Ex. 1021, ¶ 7. The PRPS server caused Petitioner’s Internet browser to
`
`intermittently hang for several minutes at a time. Amin Decl., Ex. 1021, ¶ 7;
`
`McCormack Decl., Ex. 1022, ¶ 5. Due to delays between the PRPS server and
`
`Petitioner’s browser, all exhibits did not upload until around 11:40 p.m. Petitioner
`
`then clicked “Submit” for the ’783 Petition. Amin Decl., Ex. 1021, ¶ 7;
`
`McCormack Decl., Ex. 1022, ¶ 5.
`
`Petitioner experienced further delays and errors with the ’077 Petition filing,
`
`despite trying to complete the filing as quickly as possible due to the press of
`
`midnight. Amin Decl., Ex. 1021, ¶ 9; McCormack Decl., Ex. 1022, ¶ 6. Petitioner
`
`started a new petition, entered in the identifying information for the ’077 Petition
`
`
`
`1 Just two weeks later, on December 16, 2015, PRPS crashed entirely and on
`
`December 2, 2015, the PTO announced the need for system maintenance.
`
`
`
`2
`
`
`
`
`
`(including the patent number and the statutory grounds for challenge, the number
`
`and identity of challenged claims, and the party information on the first screen) and
`
`then requested upload of the petition. Amin Decl., Ex. 1021, ¶ 9; McCormack
`
`Decl., Ex. 1022, ¶ 6. After selecting the ’077 Petition (in PDF form) to upload to
`
`PRPS, the PRPS system grayed out the content in the Internet browser (Google
`
`Chrome) and froze. Amin Decl., Ex. 1021, ¶ 10. Petitioner was unable to pick a
`
`document type, identify the Petition Name, or complete the upload of the ’077
`
`Petition at that point. Amin Decl., Ex. 1021, ¶ 10. Petitioner had to abort the
`
`filing. Amin Decl., Ex. 1021, ¶ 10. As a result of this attempted filing, PRPS
`
`assigned case number IPR2016-00274. Amin Decl., Ex. 1021 ¶ 10.
`
`Recognizing the approaching midnight deadline, around 11:45 p.m.,
`
`Petitioner tried logging into PRPS again using a different computer. Amin Decl.,
`
`Ex. 1021, ¶ 12; McCormack Decl., Ex. 1022, ¶ 8. On this second computer,
`
`Petitioner managed to enter the identifying information for the ’077 Petition, along
`
`with party information, upload the petition, pay the fee and upload some of the
`
`exhibits before midnight. Amin Decl., Ex. 1021, ¶ 8; McCormack Decl., Ex. 1022,
`
`¶ 12. But, not all of the exhibits were uploaded before midnight because again
`
`PRPS was receiving them very slowly and Petitioner’s Internet browser hung
`
`intermittently. McCormack Decl., Ex. 1022, ¶ 8. Not sure what to do given that
`
`several exhibits had not successfully uploaded, and not wanting to abort a second
`
`
`
`3
`
`
`
`
`
`attempt, Petitioners continued uploading exhibits, believing that the uploading and
`
`payment of the fee by midnight might still generate an electronic filing date of
`
`December 2, 2015. By the time the exhibits had uploaded and Petitioner hit the
`
`submit button, it was 12:29 a.m. EST (before midnight where Patent Owner and its
`
`counsel reside). Amin Decl., Ex. 1021, ¶ 13; McCormack Decl., Ex. 1022, ¶ 8.
`
`(b)
`Steps Taken Before And After Encountering Technical Problems
`Before: Petitioner worked diligently to prepare the two IPR petitions before
`
`the technical problems were encountered. By December 1, 2015 Petitioner had a
`
`Power of Attorney for each Petition, and deposited funds in its Deposit Account to
`
`pay the required fees for both petitions. Amin Decl., Ex. 1021, ¶ 3; McCormack
`
`Decl., Ex. 1022, ¶ 3. Petitioner waited for the signed declarations from Dr. Mowry
`
`to begin filing in case he had any changes that would need to be reflected in the
`
`other petition papers. Amin Decl., Ex. 1021, ¶ 4; McCormack Decl., Ex. 1022, ¶ 4.
`
`Once Dr. Mowry’s declarations were in hand, Petitioner’s counsel began filing the
`
`two petitions at about 10:30 p.m. on December 2, 2016. Amin Decl., Ex. 1021,
`
`¶ 4. Because both petitions were signed by the undersigned, Petitioner believed it
`
`had to file the papers sequentially from the undersigned’s PRPS account. Amin
`
`Decl., Ex. 1021, ¶ 6; McCormack Decl., Ex. 1022, ¶ 4.
`
`After: As discussed above, after technical issues arose, Petitioner eventually
`
`aborted a stalled filing, switched computers and opened a different browser in an
`
`
`
`4
`
`
`
`
`
`attempt to work around the significant connection delays between its browser and
`
`PRPS and to avoid the hangs it was experiencing. Amin Decl., Ex. 1021, ¶ 12;
`
`McCormack Decl., Ex. 1022, ¶ 8. When Petitioner received an electronic receipt
`
`indicating a provisional filing date of December 3, 2015 for the ’077 Petition, it
`
`immediately sought to correct that date. ’077 Petition Filing Receipt, Ex. 1023.
`
`The ’077 Petition was deposited with FedEx, and delivered to the correspondence
`
`address for Patent Owner on December 4, 2016. McCormack Decl., Ex. 1022, ¶ 9;
`
`Screenshot of Federal Express Tracking Data, Ex. 1024. On the morning of
`
`December 3rd, Petitioner’s counsel telephoned the Board and visited the Patent
`
`Office in person to request correction of the filing date of the ’077 Petition to
`
`December 2, 2015. Amin Decl., Ex. 1021, ¶ 14. Petitioner spoke with Ms. Maria
`
`Vignone, who indicated that Petitioner could request leave to file a Motion to
`
`Correct Filing date. Amin Decl., Ex. 1021, ¶ 14. Patent Owner’s counsel did not
`
`enter an appearance until December 22, 2015, and Petitioner’s counsel telephoned
`
`Patent Owner’s counsel of record that day to start the meet and confer which led to
`
`requesting this filing. Amin Decl., Ex. 1021, ¶ 15.
`
`III. ARGUMENT
`
`(a) The Authority of the Board, if Any, to Waive the Statutorily Mandated
`One Year Time Limitation for Filing the Present Case, to the Extent
`Such Time Limitation Applies
`
`Correction of an accorded filing date due to technical errors delaying final
`
`
`
`5
`
`
`
`
`
`submission is well within the Board’s authority. Petitioner is not aware of any
`
`authority for the Board to waive the statutory language of 35 U.S.C. § 315(b), but
`
`Petitioner is not requesting that the Board waive the statutorily mandated one-year
`
`time limitation under 35 U.S.C. § 315(b) in this case, because Petitioners filed the
`
`’077 Petition within that time limit. In particular, uploading of the ’077 Petition
`
`and payment of the fees were done on December 2, 2015 and those acts meet the
`
`requirement of “filing” under the statute section 315(b).2
`
`The Board is granted broad authority to “waive or suspend a requirement of
`
`parts 1, 41, and 42” under 37 C.F.R. § 42.5(b) or “to correct a clerical or
`
`typographical mistake” under 37 C.F.R. § 42.104(c). Here, the filing date
`
`generated electronically is not accurate because Petitioners had the ’077 Petition
`
`and fee on file on December 2, 2015 and only due to Internet delays did the
`
`exhibits get lodged 29 minutes after midnight.
`
`(b) The Board Should Utilize its Authority to Correct the Electronic Filing
`Date
`
`The Board has, in numerous similar circumstances, waived the regulatory
`
`
`2 Unlike section 315(b), section 312(a) has additional requirements, beyond filing,
`
`for the Board to “consider” a petition. 35 U.S.C. § 312(a). Those requirements,
`
`although not part of section 315(b), were met here. Payment Receipt, Ex. 1025.
`
`
`
`6
`
`
`
`
`
`requirements under § 42.106(a) for Petitions that were uploaded, but not
`
`“submitted.” In Conmed Corp. v. Bonutti Skeletal Innovations, LLC, the petitioner
`
`hit the “submit” button for a petition one week after it was initially uploaded to
`
`PRPS. IPR2013-00624, Paper 18 at 7 (Feb. 21, 2014). Nevertheless, the Board
`
`granted petitioner’s request to correct the filing date to the date of the initial upload
`
`and reaffirmed this result a request for rehearing, waiving any submission
`
`requirement pursuant to its authority under 37 C.F.R. § 42.5(b). Id. at 8; Request
`
`for Rehearing, IPR2013-00624, Paper 22 at 8 (Feb. 21, 2014).
`
`Similarly, in 2Wire, Inc. v. TQ Delta LLC, the petitioner asserted the
`
`documents were uploaded but that the “submit” button was not hit until the next
`
`day “due to either a technical issue (i.e., browser incompatibility) or inadvertent
`
`clerical error.” IPR2015-00239, Paper 10 at 2 (Jan. 15, 2015) (internal quotation
`
`marks omitted). The Board granted the petitioner’s request to correct the accorded
`
`filing for failing to push the “submit” button because it was merely a clerical error
`
`under 37 C.F.R. § 42.104(c). 2Wire, at 4 (citations omitted).
`
`In ABB Inc. v Roy-G-Biv Corp., the petitioner uploaded the wrong IPR, only
`
`uploading the correct one five days later. IPR2013-00063, Paper 21 at 11 (Jan. 16,
`
`2013). The Board nevertheless corrected the filing date under its § 42.104(c)
`
`authority because the rule is “remedial in nature and is therefore entitled to a
`
`liberal interpretation,” and a broad interpretation of the rule “is consistent with . . .
`
`
`
`7
`
`
`
`
`
`the realities of the modern work place, where errors are as likely to be the result of
`
`clicking on the wrong link and hitting the wrong key.” Id. at 8.
`
`Here, the 29-minute delay in hitting the “submit” button on an already-
`
`uploaded Petition was due to the related exhibits being stuck uploading and the
`
`related hold up in hitting the “Submit” button until all of the exhibits were
`
`uploaded. Amin Decl., Ex. 1021, ¶ 13; McCormack Decl., Ex. 1022, ¶ 8.
`
`Notably, Petitioner intended to file the ’077 Petition on December 2nd. The ’077
`
`Petition itself is dated December 2, 2015 (’077 Petition at 60) as is the supporting
`
`Declaration of Dr. Mowry (Ex. 1004 at 90). Petitioner made two separate attempts
`
`to upload the Petition, and had two attorneys involved in the process. Amin Decl.,
`
`Ex. 1021, ¶¶ 10–13; McCormack Decl., Ex. 1022, ¶¶ 5–8. The Petition was
`
`uploaded to PRPS before midnight and the filing fee was also paid before
`
`midnight, Eastern Standard Time. McCormack Decl., Ex. 1022, ¶ 8.
`
`Subsequent to December 2, 2015, the filing attorneys learned that had they
`
`hit “submit” before midnight, a December 2, 2015 filing date would have been
`
`assigned, but several exhibits would have been missing. That would have
`
`prompted the Board to require correction and it likely would have been accepted as
`
`long as the Petition cited the correct exhibits. For example, in Syntroleum Corp. v.
`
`Neste Oil OYJ, the petitioner both filed and served the wrong exhibits, but, because
`
`the petition cited the correct exhibits, the Board allowed the correct exhibits to be
`
`
`
`8
`
`
`
`
`
`submitted. IPR2013-00178, Paper 21 at 2–6 (July 22, 2013); see also ABB Inc. v.
`
`Roy-G-Biv, IPR2013-00063, Paper 21 at 2, 5–11 (allowing correcting of exhibits
`
`that petitioner failed to file before the one-year statutory bar because it had served
`
`the correct exhibits to the Patent Owner); Schott Gemtron Corp. v. SSW Holding
`
`Co., IPR2014-00367, Paper 30 at 3 (Sept. 22, 2014) (allowing correction of an
`
`exhibit where the correct exhibit was filed).
`
`The Board is requested to grant this motion because delays in hitting of the
`
`“submit” button as in Conmed Corp., 2Wire, and ABB Inc., were caused both by
`
`technical delays in uploading all exhibits and ultimately, a misunderstanding of
`
`when “submit” could be selected. But, the Petition was uploaded before midnight,
`
`the fee paid, and a complete copy of the Petition and exhibits were served. The
`
`Board should utilize its authority and discretion under § 42.104(c) and § 42.5(b) to
`
`correct the accorded filing date of the ’077 Petition to December 2, 2015.
`
`Finally, section 315(b), which imposes the one-year time limitation, only
`
`speaks in terms of when the Petition “is filed,” without regard to when it is served,
`
`in contrast to “service” of a district court complaint. 35 U.S.C. § 315(b). And
`
`section 312 does not require service by any specific date for purposes of section
`
`315(b) either. See 35 U.S.C. § 312(a), (a)(5). Here, the ’077 Petition was filed
`
`before the one-year time limit under section 315(b), as previously explained, and
`
`the Petition and all exhibits were served directly thereafter. Patent Owner received
`
`
`
`9
`
`
`
`
`
`a complete set of papers on December 4th via FedEx.
`
`If the Board believes that service on December 2 is required under the rules,
`
`that too is waivable under 37 C.F.R. § 42.5(c)(3) based on a showing of good cause
`
`or in the interests of justice—which the Board has recognized when there was no
`
`prejudice or the party exercised good faith in completing the action as soon as
`
`possible. See CoreLogic, Inc. v. Boundary Solutions, Inc., IPR2015-00226, Paper
`
`34, at 3 (Oct. 27, 2015) (one day delay was not prejudicial); Ricoh Americas Corp.
`
`v. MPHJ Tech. Investments, LLC, IPR2013-00302, Paper 32 at 3–4 (Mar. 11,
`
`2014) (service and filing occurred as soon as it was realized). Here, Patent Owner
`
`received the service copies on December 4, 2015, the same day had service been
`
`effected via Priority Mail Express after 5p.m. on December 2nd. See 37 C.F.R. §
`
`42.6(e); Screenshot of Federal Express Tracking Data, Ex. 1024; United States
`
`Postal Service, Service Commitments, provided as Ex. 1026. There is no prejudice
`
`to Patent Owner and service was accomplished promptly.
`
`IV. CONCLUSION AND RELIEF REQUESTED
`
`For the forgoing reasons, Petitioner respectfully requests that the Board
`
`correct the ’077 Petition’s filing date to December 2, 2015.
`
`Dated: February 8, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`Attorney for Plaid Technologies, Inc.
`10
`
`
`
`
`
`
`
`CERFITICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
`
`of Petitioner’s Motion To Correct Electronic Filing Date by electronic mail on
`
`February 8, 2016 on the counsel of record of the Patent Owner:
`
`David M. Hoffman, IPR12233-0046IP1@fr.com
`
`Dated: February 8, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125)
`Attorney for Plaid Technologies, Inc.
`
`11
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