Paper 11
`Entered: December 7, 2016
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20(b)
`
`
`
`
`
`
`
`Entered: December 7, 2016
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20(b)
`
`
`
`
`
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`
`A conference call was held on December 6, 2016, between respective
`
`counsel for Petitioner, H&S Manufacturing Company, Inc., Patent Owner,
`
`Oxbo International Corporation, and Judges Kauffman, Tartal, and Cherry.
`
`Petitioner seeks authorization to file a Motion for leave to file a Request for
`
`Rehearing of the Decision Instituting Inter Partes Review in this proceeding
`
`outside of the time provided by 37 C.F.R. § 42.71(d)(1). Patent Owner
`
`opposed Petitioner’s request.
`
`The Institution Decision was entered on November 2, 2016. Paper 7.
`
`Pursuant to 37 C.F.R. § 42.71(d)(1), a request for rehearing of a decision to
`
`institute a trial must be filed within 14 days of the entry of that decision.
`
`There is no dispute that Petitioner did not file a request for rehearing within
`
`the time provided, however, 37 C.F.R. § 42.5(c)(3) further provides that “[a]
`
`late action will be excused on a showing of good cause or upon a Board
`
`decision that consideration on the merits would be in the interests of
`
`justice.”
`
`Petitioner offers two reasons it contends it would show in a motion as
`
`good cause and in the interests of justice for late filing of its request for
`
`rehearing. First Petitioner asserts it did not appreciate that the time provided
`
`for filing a request for rehearing of a decision instituting trial (14 days) was
`
`different from the time provided for filing a request for rehearing of a
`
`decision denying institution (30 days). See 37 C.F.R. § 42.71(d). Second,
`
`Petitioner asserts that it seeks to raise the same issues in this proceeding in
`
`its request for rehearing that it seeks to raise in requests for rehearing in
`
`other proceedings concerning other patents in which institution of inter
`
`partes review was denied. Petitioner suggests that it was only after
`
`2
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`reviewing the issues raised in these related proceedings that it decided
`
`strategically that it should request rehearing in this proceeding based on the
`
`same arguments. Petitioner further suggests it would be more efficient if the
`
`issues were presented and resolved in all of the proceedings.
`
`Patent Owner contends that Petitioner effectively seeks to obviate the
`
`need to comply with the time limit for requesting a rehearing of an
`
`institution decision merely because Petitioner later decides to seek rehearing
`
`in another proceeding. Patent Owner further argues it would be prejudiced
`
`by introducing uncertainty over whether additional grounds of
`
`unpatentability will be instituted at this stage of the proceeding when it is in
`
`the process of preparing a response. Petitioner, however, represented that it
`
`was willing to adjust the schedule as necessary to provide Patent Owner with
`
`the time it is entitled to for a response.
`
`We deny Petitioner’s request for authorization to file a motion for
`
`leave to file a Request for Rehearing of the Institution Decision outside of
`
`the time provided by 37 C.F.R. § 42.71(d)(1). First, we are not persuaded
`
`that a party’s failure to identify and comply with a time limit clearly
`
`articulated in our rules supports a showing of good cause for excusing such
`
`late action. Second, a shorter period of time for filing a request for rehearing
`
`in a proceeding that is instituted, as opposed to one in which institution is
`
`denied, is supported by the need to adhere to a schedule that results in a final
`
`decision within 12 months. Petitioner had the opportunity to timely request
`
`rehearing in this proceeding, but did not do so and only chose to after
`
`evaluating its arguments in other proceedings. We are not persuaded that
`
`Petitioner can show good cause or the interests of justice support
`
`3
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`disregarding the time limit for filing a request for rehearing of the institution
`
`decision in this proceeding.
`
`For the foregoing reasons, it is hereby:
`
`ORDERED that Petitioner’s request for authorization to file a motion
`
`for leave to file a Request for Rehearing of the Institution Decision outside
`
`of the time provided by 37 C.F.R. § 42.71(d)(1) is denied.
`
`
`
`
`
`4
`
`
`
`5
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`PETITIONER
`
`Brad D. Pedersen
`Eric H. Chadwick
`Michael P. Gates
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`gates@ptslaw.com
`
`
`
`PATENT OWNERS
`
`Andrew J. Lagatta
`Gregory A. Sebald
`MERCHANT & GOULD P.C.
`alagatta@merchantgould.com
`gsebald@merchantgould.com
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