Takeaway: Any relief from the trial schedule requires a showing of good cause, and should be requested early. Any good cause will be weighed against the one-year statutory deadline for the proceeding.
In its Order, the Board denied Patent Owner’s request for authorization to file: (1) motion for leave to file a first revised patent owner’s response to decision to institute trial for IPR; (2) motion for amendment of schedule; and (3) motion to stay proceedings.
Patent Owner, citing insufficient funds to retain a technical expert, untimely resignation of litigation counsel, and the expense of seven ongoing trials before the Board, sought leave to file an amended patent owner response. Although a response (along with an expert declaration) was timely filed by Due Date 1, the Patent Owner stated that the response was not complete for the above reasons.
The Board denied Patent Owner’s request, holding that there was not a showing of good cause particularly in light of Patent Owner’s delay in seeking relief. Even if the financial constraints of Patent Owner would amount to good cause, relief was not timely requested. Patent Owner was not present at the initial telephone conference to raise objections to the Scheduling Order, and a response was timely filed by Due Date 1. The issue was first raised by Patent Owner during a conference call that took place two weeks after Due Date 1, when Patent Owner indicated it was contemplating a motion for leave to file a supplemental patent owner response. The Board had then ordered Patent Owner to immediately seek authorization to file the supplemental response, but Patent Owner waited an additional six weeks before seeking authorization.
In conjunction with Patent Owner’s motion for leave, a three month extension of time was requested. In the alternative, Patent Owner requested immediate entry of an amended patent owner response (a de facto two month extension of time). The Board stated that both options were unreasonable because they would result in the compression of the one-year proceeding into seven or eight months, respectively, for the sole benefit of Patent Owner and to the Petitioner’s detriment.
The remaining two requests were denied as moot.
Mobotix Corp. v. E-Watch, Inc., IPR2013-00335
Paper 32: Order on Conduct of the Proceeding
Dated: April 4, 2014
Before: Michael W. Kim and Matthew R. Clements
Written by: Kim