Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: March 6, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`
`Before JAMESON LEE, MATTHEW J. McNEILL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`Opinion for the Board filed by McNEILL, Administrative Patent Judge.
`
`Opinion Dissenting filed by Lee, Administrative Patent Judge.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`On February 15, 2018, the Board received an email from Patent
`Owner requesting an extension of time to file Patent Owner’s Preliminary
`Response, which is due March 12, 2018. Judges Lee, McNeill, and
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: March 6, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`
`Before JAMESON LEE, MATTHEW J. McNEILL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`Opinion for the Board filed by McNEILL, Administrative Patent Judge.
`
`Opinion Dissenting filed by Lee, Administrative Patent Judge.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`On February 15, 2018, the Board received an email from Patent
`Owner requesting an extension of time to file Patent Owner’s Preliminary
`Response, which is due March 12, 2018. Judges Lee, McNeill, and
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`Margolies conducted a conference call with counsel for the respective
`parties on February 22, 2018.1
`“A request for an extension of time must be supported by a showing
`of good cause.” 37 C.F.R. § 42.5(c)(2). During the conference call, Patent
`Owner’s counsel argued that Petitioner did not serve the instant Petition for
`inter partes review of U.S. Patent No. 5,802,467 (“the ’467 Patent”) on
`Patent Owner at the time the Petition was filed. Specifically, Patent
`Owner’s counsel argued that the assignment records for the ’467 Patent
`indicate the correspondent of record is J.A. Salazar, the current owner of the
`’467 Patent. Patent Owner’s counsel contended that instead of serving Mr.
`Salazar at the address recorded with the USPTO in the assignment of the
`patent to Mr. Salazar (see Ex. 3001 (copy of printout from
`https://portal.uspto.gov/pair/PublicPair)) as required by 37 C.F.R.
`§42.105(a) (according to Patent Owner’s counsel), Petitioner served John
`DiMatteo, counsel for a prior owner of the ’467 Patent.
`Patent Owner’s counsel also argued that Patent Owner only became
`aware of this matter when the Board contacted Patent Owner’s counsel on
`February 13, 2018 about Patent Owner’s failure to file a Mandatory Notice
`as required by 37 C.F.R. § 42.8. Patent Owner’s counsel argued Petitioner’s
`
`
`1 Jennifer Meredith and Sucheta Chitgopekar represent Patent Owner in this
`matter. Paper 5. During the conference call, Ms. Meredith requested that
`Darius Keyhani, counsel for Patent Owner in related litigation, be permitted
`to speak on behalf of Patent Owner because of his familiarity with the facts
`at issue. Ms. Meredith represented that Patent Owner intends to file a
`motion for pro hac vice admission of Mr. Keyhani. For the purposes of the
`call only, the Board allowed Mr. Keyhani to speak on behalf of Patent
`Owner. Patent Owner is directed to file a motion for pro hac vice admission
`of Mr. Keyhani within ten days of the issuance of this order.
`
`2
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`failure to timely serve the Petition violates Patent Owner’s due process
`rights and prejudices his ability to file a Preliminary Response. Patent
`Owner requests that we extend the deadline for the Preliminary Response to
`May 14, 2018, which is 90 days after Patent Owner became aware of the
`Petition on February 13, 2018.
`During the conference call, counsel for Petitioner responded that
`Petitioner served the Petition on Mr. DiMatteo, who Petitioner asserted is the
`attorney of record at the USPTO. Petitioner’s counsel argued that Petitioner
`first served Mr. DiMatteo at the “Correspondence Address” listed in the
`public Patent Application Information Retrieval (PAIR) database. See Ex.
`3002 (copy of printout from https://portal.uspto.gov/pair/PublicPair).
`According to Petitioner’s counsel, this address is no longer Mr. DiMatteo’s
`current address, and Petitioner additionally served Mr. DiMatteo at his
`current address after learning this fact. Petitioner’s counsel contended the
`file history for the ’467 Patent does not have a revocation of Mr. DiMatteo’s
`power of attorney, and no counsel that is registered to practice before the
`USPTO had made an appearance in the related litigation between the parties
`at the time the Petition was served.
`Under 35 U.S.C. § 312(a)(5), a petitioner must provide a copy of the
`petition “to the patent owner or, if applicable, the designated representative
`of the patent owner.” Rule 42.105(a) states that “[t]he petition and
`supporting evidence must be served on the patent owner at the
`correspondence address of record for the subject patent. The petitioner may
`additionally serve the petition and supporting evidence on the patent owner
`at any other address known to the petitioner as likely to effect service.”
`(emphasis added).
`
`3
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`Petitioner served the Petition on Mr. DiMatteo. Although the law
`firm Sofer & Haroun is listed as the Attorney, Agent, or Firm on the face of
`the ’467 Patent, Mr. DiMatteo is identified as the “Attorney/Agent” for the
`’467 Patent in the PAIR database. Ex. 3001. PAIR identifies an address for
`Mr. DiMatteo as the “Correspondence Address.” Id. Patent Owner’s
`argument that Rule 42.105(a) requires service on Mr. Salazar is
`unpersuasive because although Mr. Salazar is listed as a correspondent in an
`assignment of the ’467 Patent (see Ex. 3002), Mr. DiMatteo is listed as the
`“Attorney/Agent” for the ’467 Patent and his address is listed as the
`“Correspondence Address” for the ’467 Patent (see Ex. 3001). Accordingly,
`Patent Owner fails to show that Petitioner violated 37 C.F.R. § 42.105(a) by
`serving Mr. DiMatteo.
`Nonetheless, according to Patent Owner’s counsel, Patent Owner did
`not become aware of the Petition until February 13, when the Board
`contacted Patent Owner’s counsel in related litigation about Patent Owner’s
`failure to file a Mandatory Notice. Patent Owner requests an extension of
`the deadline to file his Preliminary Response because of this delay in
`becoming aware of the Petition. Patent Owner’s counsel argued that Patent
`Owner, an individual who is one of the named inventors listed on the face of
`the ’467 Patent, would suffer substantial prejudice by having less than 30
`days to prepare his Preliminary Response due to his limited resources.
`Petitioner’s counsel responded that granting the requested extension
`would prejudice Petitioner in the related litigation between the parties and
`prolong Patent Owner’s ability to make public statements about the ’467
`Patent. Petitioner’s counsel argued that the Petition relies on the same prior
`art and same expert testimony as the related litigation and Patent Owner,
`
`4
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`therefore, would not be prejudiced by the original deadline for the optional
`Preliminary Response.
`Under the particular facts of this case, we conclude that good cause
`supports a limited extension of the Preliminary Response deadline.
`Petitioner properly served Patent Owner at the correspondence address of
`record for the ’467 Patent. However, that information apparently is outdated
`and is the address of the attorney of the prior owner of the patent. The
`assignment of the patent, which was recorded in January 2007 with the
`USPTO, lists the current owner of the patent—Mr. Salazar—and his address.
`Ex. 3001. Patent Owner asserts that he needs more time to prepare the
`Preliminary Response and Petitioner fails to identify any substantial
`prejudice in extending this proceeding by a month. Accordingly, under the
`particular facts of this case, we determine that granting Patent Owner a one-
`month extension (until April 12, 2018) to file a Preliminary Response is
`appropriate.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the deadline for Patent Owner’s Preliminary
`Response shall be April 12, 2018; and
`FURTHER ORDERED that Patent Owner shall file a motion for pro
`hac vice admission of Mr. Keyhani within ten days of this Order.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`
`Before JAMESON LEE, MATTHEW J. McNEILL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge, dissenting.
`I disagree that Patent Owner has shown good cause for an extension
`of time to prepare its preliminary response. If the correspondence address in
`PAIR is incorrect or outdated, it is because Patent Owner did not timely
`update it. Patent Owner still has 27 days, from the time it actually learned of
`the Petition, to prepare a preliminary response. That is not an impossibly
`short period of time, given that the involved patent is in active litigation
`before a district court. Also, if trial eventually is instituted, Patent Owner
`will have a full opportunity to file a Patent Owner Response. Granting relief
`in this case diminishes the consequences of Patent Owner’s not updating its
`correspondence address and encourages similar behavior of other patentees
`
`6
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`in the future. The Board’s administrative staff expended substantial effort to
`locate Patent Owner at an address that is not the correspondence address
`indicated in PAIR. That is a waste of the Board’s resources, particularly if
`similar effort has to be expended in the future in connection with other
`patentees who do not update their correspondence address for whatever
`reason. Patent Owner further has not informed the Board that it has, since
`the time it became aware of the Petition, taken steps to ensure that the
`correspondence address shown in PAIR is correct and up to date.
`PAIR clearly indicates, even as of March 5, 2018, the correspondence
`address for the ’467 patent is “John M Dimatteo, PATTERSON BELKNAP
`WEBB & TYLER, 1133 Avenue of the Americas, New York NY 10036.”
`Ex. 3001. That is who and where Petitioner served the Petition, in
`accordance with 37 C.F.R. § 42.105(a).
`Insofar as the Assignment document also includes a correspondence
`address, it is not the “Correspondence Address” indicated in PAIR. Also,
`“[i]f more than one correspondence address is specified, the Office will
`select one of the specified addresses for use as the correspondence address
`and, if given, may select the address associated with a Customer Number
`over a typed correspondence address.” 37 C.F.R. § 1.33. It is not
`reasonably disputable that the correspondence address for the ’467 patent is
`“John M Dimatteo, PATTERSON BELKNAP WEBB & TYLER, 1133
`Avenue of the Americas, New York NY 10036.”
`Patent Owner can have no valid complaint that Petitioner served the
`correspondence address of record, as indicated in PAIR. Petitioner need not
`do more than what is required. Patent Owner has not shown good cause for
`an extension of time, despite the fact that there does not appear to be
`
`7
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`substantial prejudice to Petitioner if some extension of time is granted. The
`lack of substantial prejudice to Petitioner should not become the driving
`factor for granting an extension of time to Patent Owner, where Patent
`Owner itself caused the delay in its being notified of the Petition and still has
`27 days to complete a preliminary response.
`
`
`
`8
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`PETITIONER:
`
`B. Todd Patterson
`Jerry R. Selinger
`PATTERSON+SHERIDAN, LLP
`tpatterson@pattersonsheridan.com
`jselinger@pattersonsheridan.com
`
`
`PATENT OWNER:
`
`Jennifer Meredith
`Sucheta Chitgopekar
`MEREDITH & KEYHANI, PLLC
`jmeredith@meredithkeyhani.com
`
`
`9
`
`
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