`
`Filed on behalf of Intellectual Ventures I, LLC
`By: Peter J. McAndrews
`Andrew B. Karp
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`_____________
`
`Case IPR2018-00727
`Patent No. 6,628,629
`_____________
`
`PATENT OWNER’S UNOPPOSED MOTION TO EXCUSE LATE FILING
`OF OBJECTIONS TO EVIDENCE
`
`
`
`
`
`
`
`
`Patent Owner’s Unopposed Motion to Excuse Late Filing
`IPR2018-00727
`U.S. Patent No. 6,628,629
`
`I.
`
`INTRODUCTION
`On October 5, 2018, the Board issued a decision instituting inter partes
`
`review. Paper No. 8. This triggered the start of a ten business day period for
`
`Patent Owner to file objections to the evidence submitted with the Petition. 37
`
`C.F.R. § 42.64(b)(1). The objections were due to be filed, therefore, on October
`
`22, 2018 (accounting for Columbus Day falling on October 8th).
`
`Patent Owner’s objections were not filed until October 24, 2018 – two days
`
`after the due date. Patent Owner explained this to counsel for Petitioners who
`
`stated they would not oppose this motion. Patent Owner subsequently requested
`
`permission from the Board for leave to file this motion. The Board then authorized
`
`filing of this motion.
`
`The Board may excuse a party’s late action “on a showing of good cause or
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`upon a Board decision that consideration on the merits would be in the interests of
`
`justice.” 37 C.F.R. § 42(c)(3). For the reasons discussed below, Patent Owner
`
`respectfully requests that the Board exercise its discretion to excuse the late filing
`
`of objections to evidence.
`
`II. THERE IS GOOD CAUSE TO EXCUSE PATENT OWNER’S LATE
`FILING
`
`On the day that the objections were due (October 22, 2018), they were ready
`
`to be filed. On that day, however, there was an inadvertent miscommunication
`
`2
`
`
`
`Patent Owner’s Unopposed Motion to Excuse Late Filing
`IPR2018-00727
`U.S. Patent No. 6,628,629
`
`between Patent Owner’s counsel and administrative staff. Because of this
`
`miscommunication, the objections were not filed on October 22nd. Two days later
`
`(October 24, 2018), Patent Owner’s counsel recognized this oversight and
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`immediately filed the objections.
`
`Patent Owner apologizes for the oversight and submits that because the
`
`delay was inadvertent and the objections were immediately filed upon recognizing
`
`this, there is good cause to excuse the late filing.
`
`III.
`
`IT IS IN THE INTERESTS OF JUSTICE TO CONSIDER PATENT
`OWNER’S OBJECTIONS TO PETITIONERS’ EVIDENCE
`
`In the event the Board finds that Patent Owner’s reasons for the delay do not
`
`suffice for good cause, Patent Owner respectfully requests that the Board excuse
`
`the late filing in the interests of justice. When considering circumstances to
`
`determine whether the interests of justice support excusing a late action, the Board
`
`may look to whether the non-filing party suffered any actual prejudice as a result
`
`of the late filing. See Nevro Corp. v. Boston Scientific Neuromodulation Corp.,
`
`IPR2017-01812, Paper 21 at 3 (P.T.A.B. April 12, 2018); Westinghouse Air Brake
`
`Tech’s Corp. v. Siemens Industry, Inc., IPR2017-02044, Paper 16 at 3 (P.T.A.B.
`
`February 26, 2018); US Endodontics, LLC, v. Gold Standard Instruments, LLC,
`
`IPR2015-00632, Paper 38 at 3 (P.T.A.B. August 31, 2005); Standard Innovation
`
`Corp. v. Lelo, Inc., IPR2014-00148, Paper 19 at 3 (PTAB Sept. 15, 2014). In this
`
`3
`
`
`
`Patent Owner’s Unopposed Motion to Excuse Late Filing
`IPR2018-00727
`U.S. Patent No. 6,628,629
`
`instance, the present inter partes review is in the early stages, as the institution
`
`decision was issued only one month ago. Patent Owner respectfully submits that
`
`Petitioner will have sufficient time to address the objections as necessary, and no
`
`other due dates will be impacted. Furthermore, this motion is unopposed.
`
`In addition, striking the objections would prejudice Patent Owner by
`
`eliminating its ability to file a motion to exclude. It may also potentially burden
`
`the Board with exhibits that do not comport with the rules of evidence. Such an
`
`outcome would not further the interests of justice.
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully asks the Board to
`
`exercise its discretion under 37 C.F.R. § 42.5(c)(3) and excuse the late filing of
`
`Patent Owner’s objections to evidence submitted with the Petition.
`
`
`
`
`
`Dated: November 6, 2018
`
`
`
`
`
`Respectfully submitted,
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Reg. No. 38,547
`Lead Counsel for Patent Owner
`INTELLECTUAL VENTURES I LLC
`
`
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`4
`
`
`
`Patent Owner’s Unopposed Motion to Excuse Late Filing
`IPR2018-00727
`U.S. Patent No. 6,628,629
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Unopposed Motion to Excuse Late Filing were served on November 6,
`
`2018 via email to counsel for Petitioners at the following:
`
`Ericsson_629IPR@bakerbotts.com
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
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