UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PLAID TECHNOLOGIES INC.
`Petitioner
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`v.
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`YODLEE, INC. and YODLEE.COM, INC.
`Patent Owners
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`Case IPR2016-00275
`Patent 6,199,077
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`PATENT OWNERS’ OPPOSITION TO PETITIONER’S
`MOTION TO CORRECT ELECTRONIC FILING DATE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PLAID TECHNOLOGIES INC.
`Petitioner
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`v.
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`YODLEE, INC. and YODLEE.COM, INC.
`Patent Owners
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`Case IPR2016-00275
`Patent 6,199,077
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`PATENT OWNERS’ OPPOSITION TO PETITIONER’S
`MOTION TO CORRECT ELECTRONIC FILING DATE
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .............................................................................................. 1
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`II. PETITIONER FAILED TO SATISFY THE STATUTORY
`REQUIREMENTS AND CANNOT OBTAIN A DECEMBER 2
`FILING DATE ................................................................................................... 1
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`III. PETITIONER FAILED TO SATISFY ITS BURDEN TO
`IDENTIFY AUTHORITY ALLOWING THE BOARD TO
`GRANT AN EARLIER FILING DATE AND TO PROVIDE
`SUFFICIENT CAUSE TO DO SO .................................................................... 5
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`IV. CONCLUSION ................................................................................................ 10
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`2Wire, Inc. v. TQ Delta LLC,
`Case IPR2015-00239 (PTAB Jan. 15, 2015) (Paper 10) .................................. 6, 7
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`ABB Inc. v. Roy-G-Biv Corp.,
`Case IPR2013-00063 (PTAB Jan. 16, 2013) (Paper 21) ...................................... 7
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`ConMed Corp. v. Bonutti Skeletal Innovations, LLC,
`Case IPR2013-00624 (PTAB Feb. 21, 2014) (Paper 18) ..................................... 6
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`CoreLogic, Inc. v. Boundary Solutions, Inc.,
`Case IPR2015-00226 (PTAB Oct. 27, 2015) (Paper 34) ..................................... 9
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`GHS Health Maintenance Organization, Inc. v. U.S.,
`536 F.3d 1293 (Fed. Cir. 2008) ............................................................................ 5
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`Terremark North America LLC v. Joao Control & Monitoring Sys., LLC,
`Case IPR2015-01482 (PTAB Dec. 28, 2015) (Paper 10) ............................passim
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`Statutes
`35 U.S.C. § 312(a) ............................................................................................passim
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`35 U.S.C. § 315(b) ......................................................................................... 2, 3, 6, 9
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`Other Authorities
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`37 C.F.R. § 42.5 ..................................................................................................... 5, 6
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`37 C.F.R. § 42.104(c) ................................................................................................. 6
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`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) ........................................................ 2
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`ii
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`EXHIBIT LIST
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`Exhibit No. Description
`2001
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen.
`Kyl)
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`iii
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`Pursuant to the Board’s Order (Paper 8, February 1, 2016), Patent Owners
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`Yodlee, Inc. and Yodlee.com, Inc. respectfully submit their Opposition to
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`Petitioner’s Motion to Correct Electronic Filing Date.
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`I.
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`INTRODUCTION
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`Petitioner waited until 10:30 p.m. on the final night of the one-year deadline
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`for filing an IPR petition, ran out of time, and was unable to complete the
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`statutorily-mandated filing and service by December 2, 2015. Thus, per 35 U.S.C.
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`§ 312(a), the Petition cannot be accorded a filing date of December 2, 2015.
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`In response to its failure to meet the statutory requirements, Petitioner files
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`this Motion seeking extraordinary relief, requesting an effective extension of the
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`statutory deadline. But, Petitioner’s filing problems arose from its own intentional
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`delay in completing the petition, its decision not to file two petitions in parallel,
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`and its failure to effect timely service, despite having every means at its disposal to
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`do so. Petitioner thus cannot meet its burden of showing how the Board has
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`authority on these facts to grant this extraordinary relief. Thus, the Motion should
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`be denied.
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`II.
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`PETITIONER FAILED TO SATISFY THE STATUTORY
`REQUIREMENTS AND CANNOT OBTAIN A DECEMBER 2
`FILING DATE
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`The IPR statute only grants the PTO authority to institute an IPR if that
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`petition is filed within one year of the Petitioner being served with a complaint for
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`1
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`patent infringement. 35 U.S.C. § 315(b); see also Terremark North America LLC
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`v. Joao Control & Monitoring Sys., LLC, Case IPR2015-01482 (PTAB Dec. 28,
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`2015) (Paper 10), slip op. at 7.1 As per the same statute, a petition may only be
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`given a filing date once (1) the petition has been filed with all supporting evidence
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`and exhibits; (2) payment has been made; and (3) the complete petition is served
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`on the patent owner. 35 U.S.C. § 312(a); Terremark, slip op. at 7.
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`Petitioner failed to satisfy these statutory criteria, and thus the Petition was
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`untimely and the Board therefore cannot institute inter partes review. The failure
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`to satisfy these statutory criteria by December 2, 2015 is determinative and
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`prevents Petitioner from obtaining such a filing date.
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`Petitioner makes no argument that it satisfied each of the statutory
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`requirements by December 2, 2015. Notably, it is undisputed that Petitioner did
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`not serve (or even attempt service) until December 3rd. Ex. 1024 (Screenshot of
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`Federal Express Tracking Data). It is also undisputed that Petitioner had not
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`1 Indeed, this one year requirement was specifically debated by Congress
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`and the result of a compromise with proponents of a shorter time bar. Ex. 2001,
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`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl). The time-
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`bar was no after-thought but a carefully considered part of the legislation that
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`should not be undermined absent clear authority to do so.
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`2
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`completed the upload of all of the required parts of its Petition nor had it clicked
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`“Submit.” See ’077 Petition Filing Receipt, Ex. 1023 (filing not complete until
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`December 3, 2015); Amin Decl., Ex. 1021 at ¶ 13; McCormack Decl., Ex. 1022 at
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`¶ 8. Thus, a filing date of December 2, 2015 may not be granted because Petitioner
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`failed to satisfy the statutory criteria by that date.
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`Petitioner’s argument that § 315(b) is merely satisfied by uploading the
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`petition without exhibits (or with only some exhibits) lacks any support in the
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`statutes, case law, regulation, or any other authority. In fact, Petitioner’s own
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`evidence makes clear that the PTO does not consider the filing to have been
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`complete upon even the clicking of submit, much less upon partial uploading of
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`some subset of the required files. The standard PTO Filing Receipt states:
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`“Assignment of an actual filing date is contingent on confirmation of fee payment,
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`proper service and compliance with all other requirements.” ’077 Petition Filing
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`Receipt, Ex. 1023 (emphasis added). This evidence shows the PTO recognizes that
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`a filing date is contingent upon satisfaction of all statutory requirements, which
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`Petitioner failed to do here by December 2, 2015.
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`Petitioner’s arguments that § 312(a) was satisfied, or alternatively that it is
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`not required to be satisfied for “filing” under § 315(b) are similarly unpersuasive.
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`The plain text of the § 312(a) declares that “A petition filed under section 311 may
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`be considered only if” the listed requirements are met. 35 U.S.C. § 312(a)
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`(emphasis added). A petition that cannot statutorily be considered by the PTO
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`cannot be accorded a filing date. Indeed, the Board has previously acknowledged
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`this, holding “a petition is only accorded a filing date once (1) a petition has been
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`filed; (2) payment has been made; and (3) the complete petition is served on the
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`patent owner” while citing 35 U.S.C. § 312(a). Terremark, slip op. at 7.
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`There is no dispute that the requirements of § 312(a) were not satisfied on
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`December 2, 2015. First, 35 U.S.C. § 312(a)(3) requires the petition include “(A)
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`copies of patents and printed publications that the petitioner relies upon in support
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`of the petition; and (B) affidavits or declarations of supporting evidence and
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`opinions, if the petitioner relies on expert opinions,” i.e. copies of the exhibits to
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`the petition. Petitioner has admitted that the full set of exhibits were not filed until
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`December 3, 2015. Motion at 4; ’077 Petition Filing Receipt, Ex. 1023.
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`Additionally, 35 U.S.C. § 312(a)(5) requires service of the petition upon
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`Patent Owner, which again did not occur on December 2, 2015 by Petitioner’s own
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`admission. Motion at 9-10; Screenshot of Federal Express Tracking Data, Ex.
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`1024 (service initiated on December 3, 2015). Petitioner’s argument that there is
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`no express deadline for service identified in the statute is incorrect, as the plain
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`language of the statute makes clear that service is a requirement for a petitioned to
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`be “considered” as “filed.” 35 U.S.C. § 312(a).
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`These clear, indisputable failures to satisfy the statutory requirements of 35
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`U.S.C. § 312(a) by December 2, 2015 prevent Petitioner from obtaining a
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`December 2nd filing date. The present Motion must be denied.
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`III. PETITIONER FAILED TO SATISFY ITS BURDEN TO IDENTIFY
`AUTHORITY ALLOWING THE BOARD TO GRANT AN EARLIER
`FILING DATE AND TO PROVIDE SUFFICIENT CAUSE TO DO SO
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`Petitioner bears the burden on its Motion to establish both (1) that the Board
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`has authority to grant an earlier filing date; and (2) sufficient cause exists to grant
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`an earlier filing date. Petitioner has failed to make either of these showings.
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`Petitioner relies exclusively on two regulations for the proposition that the
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`Board has authority to grant an earlier filing date, but neither regulation is
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`applicable here.2 37 C.F.R. § 42.5 only authorizes the Board to waive “a
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`requirement of parts 1, 41, and 42,” i.e. other aspects of the regulations governing
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`IPR proceedings. Petitioner’s failure here, however, is the failure to satisfy the
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`2 Moreover, even if Petitioner could show that the regulations applied to the
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`facts surrounding its late filing of the Petition, no regulation can override a
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`statutory requirement, such as the requirements of 35 U.S.C. § 312(a) discussed
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`above. “When a regulation directly contradicts a statute, the regulation must
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`yield.” GHS Health Maintenance Organization, Inc. v. U.S., 536 F.3d 1293, 1297
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`(Fed. Cir. 2008).
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`statutory criteria of 35 U.S.C. §§ 312(a) and 315(b), and thus 37 C.F.R. § 42.5 does
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`not grant the Board any authority to grant an earlier filing date. The only other
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`regulation relied upon by petitioner – 37 C.F.R. § 42.104(c) – relates only to “a
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`clerical or typographical mistake in the petition” but not defects in the filing of the
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`petition, much less defects caused by Petitioner’s intentional decision to wait to the
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`last minute to begin filing the Petition. Further, this regulation is clear that “The
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`grant of such a motion does not change the filing date of the petition.” 37 C.F.R.
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`§ 42.104(c). Thus, Petitioner has failed to identify any authority allowing the
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`Board to grant a filing date earlier than when the statutory requirements of 35
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`U.S.C. § 312(a) were satisfied.
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`Each of the prior opinions of the Board relied upon by Petitioner is readily
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`distinguishable from the Petitioner’s Motion. ConMed Corp. v. Bonutti Skeletal
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`Innovations, LLC related to an inadvertent failure to click the “submit” button.
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`Case IPR2013-00624 (PTAB Feb. 21, 2014) (Paper 18), slip op. at 2-6. However,
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`all documents in ConMed were uploaded and all documents were served timely
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`prior to the deadline. See Terremark, slip op. at 11 (distinguishing ConMed).
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`There was no comparable failure to timely serve or failure to upload documents as
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`there is here.
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`Similarly, 2Wire, Inc. v. TQ Delta LLC also related to an inadvertent failure
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`to click the “submit” button. Case IPR2015-00239 (PTAB Jan. 15, 2015) (Paper
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`10), slip op. at 4-8. But again, 2Wire did not involve any other deficiencies
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`because the documents were fully uploaded and served timely. See Terremark,
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`slip op. at 12 (distinguishing 2Wire). Thus, 2Wire is also not comparable to the
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`instant Motion.
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`ABB Inc. v. Roy-G-Biv Corp. was a case involving an inadvertent failure to
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`file the correct exhibit. Case IPR2013-00063 (PTAB Jan. 16, 2013) (Paper 21),
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`slip op. at 2, 5-11. However, as the Board has recognized, in ABB, the correct
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`exhibit was timely served and there was only a clerical error of uploading the
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`incorrect document. See Terremark, slip op. at 12-13 (distinguishing ABB). Thus,
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`ABB also does not excuse Petitioner’s delay, partial uploading, and untimely
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`service.
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`The only prior Board opinion which addresses a comparable situation is
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`Terremark. There, the petitioner made similar arguments as Petitioner makes here
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`and all were rejected by the Board. Similar to here, the petitioner in Terremark
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`alleged that PRPS was “apparently malfunctioning” based on the fact that
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`documents took time to upload and displayed a “pending” status during that
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`upload. Terremark, slip op. at 8. The Board rejected that argument for numerous
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`reasons, including that the petitioner failed to show there were any errors with
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`PRPS as opposed to petitioner’s own computer or network. Id. Additionally, the
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`Board rejected this argument because even if there was a technical error in
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`Attorney Docket No: 12233-0046IP1
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`uploading, that still fails to provide any justification for failing to timely serve the
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`patent owner. Id. Here too, Petitioner has failed to show that there were any actual
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`errors with PRPS and even if there were, it has also failed to offer any justification
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`for failing to timely serve Patent Owner. Thus, the Motion should be denied.
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`Similar to this case, the petitioner in Terremark also voluntarily chose to file
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`multiple petitions in serial order, but again the Board noted that this intentional
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`decision by a petitioner does not justify granting a different filing date. Terremark,
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`slip op. at 9.
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`Petitioner’s argument that it could have hit submit before midnight without
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`all the exhibits and the petition would be considered timely (Motion at 8) is both
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`without merit and irrelevant. The three cited cases addressing incorrect exhibits
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`each deal with inadvertent failure to file and/or serve the correct exhibit, but in
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`each case the exhibit was correctly identified in the petition (Syntroleum) or timely
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`served (ABB, Schott). See Terremark, slip op. at 12-13 (distinguishing Syntroleum,
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`ABB, and Schott). Petitioner’s hypothetical is also irrelevant, the Petitioner here
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`did not hit submit before midnight, and just as importantly, did not serve the
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`petition before midnight which it could have done irrespective of any alleged
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`“technical” problems in uploading the documents.
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`Finally, Petitioner’s argument that late service is excusable cannot stand.
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`Neither of the service related cases Petitioner cites relate to late filing of a petition
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`8
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`Attorney Docket No: 12233-0046IP1
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`nor do they implicate any statutory deadlines like 35 U.S.C. § 315(b). Those cases
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`dealt with a patent owner’s response (CoreLogic) and a motion to amend (Ricoh),
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`neither of which implicate any statutory deadlines. Further, CoreLogic, Inc. v.
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`Boundary Solutions, Inc. granted the motion to allow the late filing precisely
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`because there was “essentially no prejudice.” Case IPR2015-00226 (PTAB Oct.
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`27, 2015) (Paper 34), slip op. at 3. In contrast, granting Petitioner’s Motion here
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`would be highly prejudicial to Patent Owner by allowing Petitioner to circumvent
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`the statutorily-prescribed one-year deadline for filing petitions for inter partes
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`review.
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`Petitioner has failed to show any good cause for granting the Motion and
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`awarding Petitioner with an earlier filing date than it is entitled to under the
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`statutory regime established by Congress. Petitioner deliberately chose to wait
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`until the last moments of the last day to file the Petition. This decision is
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`particularly egregious in light of Petitioner’s apparent belief that multiple petitions
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`must be filed in serial (Ex. 1022, McCormack Decl., ¶ 4), which would only extend
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`the time for filing and suggest that an even earlier start is required.
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`Petitioner’s argument that it was waiting for potential changes in the
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`declaration is not a sufficient justification for excusing the late filing. By waiting
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`until the late minute for any such changes, Petitioner knowingly risked not meeting
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`the one year bar by not leaving enough time to complete filing and service, much
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`Attorney Docket No: 12233-0046IP1
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`less enough time to do the multitude of tasks that would have been required in the
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`case of any changes (e.g., finalizing the changes to the declarations, obtaining the
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`expert’s signature, making any necessary corresponding changes to the petitions,
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`filing the petitions, and serving the petitions all in the one and a half hour window
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`Petitioner left itself). The Board should not now rescue Petitioner from the clearly
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`foreseeable hazards of delaying one's filing until the last moments of the last day.
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`IV. CONCLUSION
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`Petitioner is simply not entitled to the extraordinary relief it seeks with this
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`Motion. Petitioner did not encounter any actual errors with the PRPS and its late
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`submission and service were not the result of any inadvertent or clerical mistake.
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`Rather, Petitioner simply ran out of time due to its own deliberate decision about
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`when to file, and, thus, both its motion and institution should be denied.
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`10
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`Dated: February 16, 2016
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`Respectfully submitted,
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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` By: /David M. Hoffman/
` David M. Hoffman
`Reg. No. 54,174
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`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: (512) 226-8154
`F: (512) 320-8935
`Email: IPR12233-0046IP1@fr.com
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`Counsel for Patent Owners
`Yodlee, Inc. and Yodlee.com, Inc.
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on February
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`16, 2016, a complete and entire copy of this Patent Owners’ Opposition to
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`Petitioner’s Motion to Correct Electronic Filing Date was provided via electronic
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`service to the Petitioner, by serving the correspondence address of record as
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`follows:
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`Brian Buroker
`Omar Amin
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
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`E-mail: bburoker@gibsondunn.com
` oamin@gibsondunn.com
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`12
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