Order Granting Motion to Expedite IPR2015-00580

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Takeaway: The Board has the authority to expedite a preliminary response under 37 C.F.R. § 42.5(c)(1).

In its Order, the Board granted Petitioner’s request to expedite Patent Owner’s Preliminary Response.  Also, the Board authorized Petitioner to submit a reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder in the event that Patent Owner elects to file an opposition to the Motion for Joinder.

Petitioner had requested joinder of the instant proceeding, namely, IPR2015-00580, with related proceeding IPR2014-00938.  The instant IPR2015-00580 proceeding had challenged four claims of the same ’827 patent for which review had been denied in the related IPR2014-00938 proceeding.  At the same time, Petitioner had sought to expedite Patent Owner’s time to file its Preliminary Response in the instant IPR2015-00580.

Upon consideration of the positions of both of the parties, the Board elected to grant Petitioner’s request to expedite Patent Owner’s preliminary response.  The Board provided several reasons for why it decided to proceed in this way.

First, the Board found that “the new ground involves only four claims and is substantially similar to the old ground, with the addition of a new reference with which Patent Owner is

familiar already.”  This led the Board to conclude that expediting Patent Owner’s Preliminary Response date would not overly burden Patent Owner.  Second, the Board felt that if it did not expedite Patent Owner’s Preliminary Response, but then  later granted Petitioner’s Motion for Joinder, then “significant scheduling changes” would be required in the related IPR2014-00938 proceeding.

Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., Shenzen Jiawei Photovoltaic Lighting Co., Ltd., Atico International (Asia) Ltd., Atico International USA, Inc., Chien Luen Industries Co., Ltd., Inc. (Chen Luen Florida), Chien Luen Industries Co., Ltd., Inc. (Chien Luen China), Coleman Cable, LLC, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test Rite Products Corp. v. Simon Nicholas Richmond, IPR2015-00580
Paper 16: Order on Conduct of the Proceeding
Dated: February 13, 2015

Patent: 7,429,827 B2

Before: William V. Saindon, Justin T. Arbes, and Barry L. Grossman

Written by: Saindon
Related Proceeding: IPR2014-00938