Takeaway: If opposing a motion to deem a late filing as timely, the opposing party should focus on any actual prejudice caused by the delay given the fact that the parties are able to stipulate extensions in time for due dates 1-5.
In its Order, the Board authorized Patent Owner to file a motion to deem the late filing of the Patent Owner Response as timely. The parties had previously stipulated that the Patent Owner’s Response was due by August 18, 2014, and Patent Owner submitted the Response on August 19, 2104. The parties therefore sought guidance on addressing the timeliness of the Response.
The Board stated that Patent Owner should file a motion to address the issue, and recommended that the motion include what documents were filed when, any technical difficulties that prevented timely filing, and any additional information regarding service beyond what was present in the certificate of service. The motion should be accompanied by a declaration from the person who filed the documents with the Board. The Board also authorized an opposition to the motion, but advised Petitioner that because the due date for a patent owner response is not a statutory requirement, the opposition should focus on any actual prejudice caused by the delay, keeping in mind that the extension of the due date was mutually agreed upon and that the parties are free to stipulate to further extensions of certain due dates if necessary.
Standard Innovation Corporation v. Lelo, Inc., IPR2014-00148
Paper 13: Order on Conduct of the Proceeding
Dated: August 27, 2014
Patent 7,749,178 B2
Before: Phillip J. Kauffman, Jacqueline Wright Bonilla, and Christopher L. Crumbley
Written by: Kauffman