Takeaway: A patent owner’s desire to respond to the arguments in a final written decision in another proceeding on the same patent is not enough to justify modifying the last two due dates of a scheduling order.

In its Order, the Board denied-in-part a motion to modify the scheduling order. Patent Owner requested an extension of each due date in the scheduling order by either more than a month or two months so that the Patent Owner Response would be due after the statutory deadline for the final written decision in IPR2015-00066, a pending inter partes review involving the same patent with a different petitioner.  Petitioner responded that it would prefer to maintain the existing schedule and that the proposed extensions would prejudice Petitioner because they would cause scheduling conflicts for counsel and are strategically helpful to Patent Owner.  Petitioner stated a willingness to extend due date 1 until four business days after the Board issues the final written decision in IPR2015-00066.

The Board reminded the parties that they may stipulate to extend due dates 1 through 5 in the Scheduling Order. However, the Board denied Patent Owner’s request to extend due dates 6 and 7.  The Board found that Patent Owner’s desire to address the final written decision from IPR2015-00066 in its response does not warrant extending the final two dates in the Scheduling Order.  Additionally, Petitioner’s concerns regarding prejudice to Petitioner and scheduling difficulties weighs against granting the extensions.  Further, extending these dates would bring the proceeding out of sync with IPR2015-01556 and require separate hearings, and the preliminary response was filed early requiring an expedited statutory deadline for the institution decision.

Sony Corporation v. Imation Corporation, IPR2015-01557
Paper 9: Order on Conduct of the Proceeding D
ated: Feburary 16, 2016
Patent 6,890,188 B1
Before: Kevin F. Turner, Stacey G. White, and Kerry Begley
Written by: Begley