Order Dismissing Petitions CBM2014-00142, 147

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Takeaway: The Board will more likely consider a late filing if the party that missed the deadline took immediate action to correct the late filing.

In its Order, the Board dismissed the Petitions in CBM2014-00142 (“the ’142 Petition”) and CBM2014-00147 (“the ’147 Petition”) for being filed late. Petitioner had filed three defective petitions and was given the opportunity by the Board to make appropriate corrections within five business days.  One corrected petition was timely filed, but the corrected ’142 Petition was filed 74 days late and the corrected ’147 Petition was filed 64 days late.  The Order dismissing petitions addressed each of these in turn.

During a conference call, the Board ordered Petitioner to show cause why trial should be instituted. The Board noted that a late filing may be excused upon a showing of good cause or that consideration would be in the interests of justice.  The Board was not persuaded that Petitioner had shown good cause or that it would be in the interest of justice to accept the proposed correction in either proceeding for consideration on the merits.

The Board stated that “[c]entral to [its] decision is not the fact of missing a due date, but Petitioner’s actions after recognizing that a due date has been missed.” The Board explained that neither corrected petition explained the delay and Petitioner had not contacted the Board to seek a time extension.  Generally, the Board noted, parties that miss a due date take “prompt remedial action, including contacting the Board to explain any inadvertent circumstance, requesting leave for a late filing, and working together with opposing counsel to propose a mutually satisfactory resolution.”  However, Petitioner did not take any of these steps.

Further, the Board noted that Petitioner had known of the missed deadlines by early July 2014 at the latest, but had continued “with other unrelated substantive tasks” and did not file the corrected petitions until late August and early September. During this time, Patent Owner “was left in a state of uncertainty” regarding how to respond to the petitions in a Preliminary Response.

The Board also addressed two specific arguments raised by Petitioner. First, Petitioner suggested that all the problems would be resolved by accepting the late filings and providing new filing dates for each Petition, thereby giving Patent Owner a renewed period of time for preparing a Preliminary Response.  The Board was not persuaded, in particular, noting that Petitioner was overlooking “how the integrity of the administrative process is undermined by Petitioner’s conduct.”  The Board had set the deadline for a reason and did not allow “correction by Petitioner at will, anytime.”  The Board suggested that while such an approach may be appropriate in some situations, it was not appropriate here where Petitioner did not seek resolution immediately.  The Board further stated “Petitioner’s proposal is premised on a misplaced perspective that diminishes the Board’s supervision and influence on the conduct of the proceeding by suggesting that a party may choose whether and when to comply with a Board order, and then choose, if it were challenged for noncompliance, a remedy that it most prefers and perhaps even can tolerate.”

Second, Petitioner had suggested that “if the Board issued the Show Cause Order earlier than it did, Petitioner would not be as late as it was.” The Board was not persuaded, finding that the damage had already been done by the time it issued the Show Cause Order.  The Board refused to allow Petitioner to “treat the possibility of a Show Cause Order with regard to a violation or non-compliance of another Board Order as a docket call-up or reminder to comply with that Board Order.”  Thus, the Board dismissed both late-filed corrected Petitions, which left substantively defective and uncorrected petitions.

Dealersocket, Inc. v. Autoalert LLC, CBM2014-00142, CBM2014-00147
Paper 10: Order on Late Filing and Dismissal of Petition
Dated: September 8, 2014
Patent: 7,827,099 B1; 8,005,752 B1
Before: James Donald Smith, Scott R. Boalick, Jameson Lee, Joni Y. Chang, and Michael R. Zecher
Written by: Lee
Related Proceeding: CBM2014-00146