Takeaway: Settlement negotiations may not provide sufficient cause to extend time for filing the preliminary response in light of the fact that the filing of a preliminary response is optional and a patent owner may waive such a filing if doing so would facilitate settlement.

In its Order, the Board denied the parties’ stipulated motion to extend time for Patent Owner’s preliminary response to the Petition. Patent Owner had emailed the Board on behalf of both parties “seeking a two-month extension of the filing deadline for Patent Owner’s preliminary response, in light of ongoing settlement negotiations.” The parties further agreed “to expedite the proceedings if inter partes review is instituted.”

The Board denied the parties’ request: “Based on the facts of this case, the panel is not persuaded that the parties’ engagement in settlement negotiations provides good cause to extend by two months the filing deadline established by regulation.” See 37 C.F.R. § 42.5(c)(2). The Board noted further, however, that the “filing of a preliminary response is optional and Patent Owner may waive such a filing, if doing so would facilitate settlement.” See id. § 42.107.

Euramax Int’l, Inc. v. Invisaflow, LLC, IPR2016-00423
Paper 6: Order on Conduct of the Proceeding
Dated: March 14, 2016
Patent: 8,556,195 B1
Before: Sally C. Medley, Lynne E. Pettigrew, and Amanda F. Wieker
Written by: Wieker