In its Order, the Board denied Petitioner’s request to dismiss Patent Owner’s Motion to Amend with prejudice. Petitioner argued that the Motion to Amend should be dismissed because it was filed late, Patent Owner did not properly “confer” with the Board regarding the extensive claim amendment, and the Motion contained alleged substantive deficiencies, such as treating the prior art insufficiently and incorporating improperly by reference arguments from a declaration. The Board stated that late action will be excused either upon a showing of good cause or a Board decision that consideration on the merits would be in the interest of justice. The Board stated that based upon the facts presented, the late filing would be excused. The Board also disagreed that Patent Owner did not confer with the Board, citing to its December 20, 2013 Order. Finally, the Board noted that arguments incorporated by reference from one document into another may be overlooked, but Petitioner can address these deficiencies in its Opposition to the Motion to Amend. The Board also allowed Patent Owner to file exhibits referenced in the declaration and provide correct citations to the declaration in the Patent Owner Response.

Richo Americas Corp. and Xerox Corp. v. MPHJ Tech. Investments, LLC, IPR2013-00302
Paper 32: Order on Conduct of the Proceeding
Dated: March 11, 2014
Patent 7,986,426 B1
Before: Sally C. Medley, Michael P. Tierney, and Karl D. Easthom
Written by: Medley