Purcell covers the issue in very plain and foward language..regarding 35 U.S.C. § 312(a)(5)

RE denial...35 U.S.C. § 312(a)(5) vs. See 37 C.F.R. § 42.71(d)

"4. We are not persuaded by Patent Owner’s arguments directed to the

purported statutory requirements of service under 35 U.S.C. § 312(a)(5)

(Req. 4), when the language of the statute instead requires that “the

petitioner provides copies of any of the documents . . . .” Moreover, Patent

Owner’s request for rehearing does not indicate where in the Motion the

argument was made regarding “whether Patent Owner’s litigation counsel

may be deemed ‘the designated representative of Patent Owner’ under

35 U.S.C.§ 312(a)(5).”

See 37 C.F.R. § 42.71(d) (“The request must specifically

identify . . . the place where each matter was previously addressed . . . .”).

We could not have misapprehended or overlooked an argument that was not

presented in the Motion. We remain persuaded that, based on the evidence

presented, Petitioner has provided Patent Owner with copies of the

documents, as required by the statute. Paper 14, 4."

IMO, no matter what Purcell pleads....The PTAB is not going to listen....the above is not an invition to re-submit.

The following is the basic story...

LAW at issue 35 USC Statute vs. PTAB CFR rules...the PTAB cannot disregard 35 USC in the shadow of CFR rules.

The Laws in question…

Our governing statute regarding service provides that a petition for inter

partes review may be considered only if “the petitioner provides copies of any of

the documents required under paragraphs (2), (3), and (4) to the patent owner or, if

applicable, the designated representative of the patent owner.” 35 U.S.C.

§ 312(a)(5).

Regarding the one-year bar, 35 U.S.C. § 315(b) states: “An inter partes

review may not be instituted if the petition requesting the proceeding is filed more

than 1 year after the date on which the petitioner . . . is served with a complaint

alleging infringement of the patent.”

Our rules state that the “petition and supporting evidence must be

served on the patent owner at the correspondence address of record for the subject

patent. The petitioner may additionally serve the petition and supporting evidence

on the patent owner at any other address known to the petitioner as likely to effect

service.” 37 C.F.R. § 42.105(a).

Moreover, 37 C.F.R. § 42.106(a)(2) provides that

the petition will not be accorded a filing date until the petition satisfies the

requirement of effecting “service of the petition on the correspondence address of

record as provided in 37 C.F.R. § 42.105(a).”

Additionally, 37 C.F.R. § 42.101(b) provides

that a petitioner may file a petition for inter partes review unless the “petition

requesting the proceeding is filed more than one year after the date on which the

petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner is

served with a complaint alleging infringement of the patent.”

***************************************************************

PTAB considerations 1st denial order:

5). The statute requires only that a petitioner provide copies of the required documents “to the patent owner or, if applicable, the designated representative of the patent owner.” 35 U.S.C.§ 312(a)(5).

The parties appear to agree, and the evidence supports, that Petitioner

provided copies of the required documents to a designated representative of Patent

Owner in a timely manner. Thus, the statutory requirement has been met.

We agree with Patent Owner that Petitioner’s service of the Petition and

supporting documents to the firm of Thorpe, North & Western failed to comply

with 37 C.F.R. § 42.105(a). 37 C.F.R. § 42.105(a) specifies that “[t]he petition and

supporting evidence must be served on the patent owner at the correspondence

address of record for the subject patent.” The correspondence address of record for

a patent can be discovered simply by entering the number of the patent into the

USPTO’s web-based Patent Application Information Retrieval (PAIR) portal

(http://portal.uspto.gov/pair/PublicPair). Petitioner admits that, rather than serving

the address of record for U.S. Patent No. 5,839,108, it served Patent Owner’s

former counsel of record, as listed on inter partes review petitions filed by Intel

Corp. Opp. 2

3. Relying on the notice of service attached to an earlier petition

filed by another party in lieu of consulting the Patent Office database to determine

the correspondence address of record is not a good faith attempt to comply with

Rule 42.105(a).

Petitioner’s effective service of the Petition and supporting documents on

the Patent Owner through its litigation counsel, however, is undisputed. Because

Petitioner has complied with 35 U.S.C. § 312(a)(5); because counsel participating

in this proceeding on behalf of Patent Owner actually received the Petition prior to

the expiration of the one-year bar set forth in 35 U.S.C. § 315(b); and because

Patent Owner does not allege that its time to respond to the Petition or its access to

evidence has been affected meaningfully by Petitioner’s failure to comply, the

remedy Patent Owner seeks (effectively, dismissal of the Petition with no

opportunity to re-file) is out of proportion to Petitioner’s rule violation.

Accordingly, on that basis, we exercise our discretion under 37 C.F.R. § 42.5(b)

to waive the requirement of 37 C.F.R. § 42.105(a) and deny Patent Owner’s

motion. Moreover, on these facts, we do not see any need to change the

December 31, 2014, filing date accorded to the Petition. Paper 6. Petitioner,

however, must comply with the Board’s procedural rules for the remainder of this

proceeding.

==========================================================

Purcell re-hearing arguments

Re PTAB comment "The parties appear to agree," ....No they do not agree.

RE Purcell: There is no dispute that Petitioner-never directly provided Patent Owner with

copies of the required documents. Likewise, Petitioner has -not properly served the

designated representative of the Patent Owner. The Board apparently concedes that

Thorpe, North & Western, the entity that Petitioner attempted to serve, is not "the''

or even ''a" designated representative of Patent Owner. The sole issue, then, is

whether Patent Owner's litigation counsel may be deemed ''the designated

representative of Patent Owner'' under § 312(a)(5).

Mr. Handal is not the designated representative of Patent Owner. Rather, the

undersigned (Purcell), as the sole representative of Patent Owner designated by Patent Owner (having power of attorney) to represent it before the USPTO, is the sole designated representative of Patent Owner under § 312(a)(5).

The relevant statute makes a clear distinction between the ''Patent owner and

the "designated representative of the patent owner.

With regard to the term patent owner, it is clear that the service on some representative of the patent owner is not service on the patent owner, since otherwise the phrase ''or if applicable, the designated representative of the patent owner" would be redundant.

It is further clear that the provision of the petition to some person such that the petition eventually winds its way around to reaching the patent owner is not what the statute intended.

For example, if a patent were owned by an individual, would the mailing of the

petition to the Individuals grandson of the same name suffice? What if the petition

were mailed to a foreign patent attorney who was handling a corresponding foreign

patent application claiming the benefit of priority to the application upon which the

patent subject to the petition issued? If the patent owner were a corporation, what

about mailing the petition to the president of a foreign corporation that is a

commonly owned sister corporation?

Clearly, Petitioner here did not provide a copy of the petition to the patent

owner within the meaning of the statute. This conclusion is further bolstered by the

fact that Mr. Handal has never been registered to practice before the US -PTO, a fact

as to which the Board may take judicial notice by reviewing the USPTO's internal

If that were the intent of the statute, then certainly it would have been drafted to

read something like ''provide the petition to anyone such that the patent owner

actually becomes aware of the petition within seven days thereafter.

(2) The Order Errantly Construes The Statutory Requirement Of Service Of A

Petition Under 35 U.S.C. § 312(a)(5)

37 C.F.R. § 42.5(b) authorizes the Board to waive or suspend certain

requirements of the rules, however, the Board has no power or authority to waive any

statutory requirement,' such as that set forth in 35 U.S.C. § 312(a)(5):

“the petitioner provides copies of any of the documents required under

paragraphs (2), (3), and (4) to the patent owner or, if applicable, the

designated representative of the patent owner.”

This is consonant with the USPTO's website pages for Patent Review Processing

System (PRPS) under Section 1) entitled "Filing a Petition" of Frequently Asked

Questions (FAQs), where the USFTO distinguishes between statutory requirements

and regulatory requirements and states that the failure to comply with the former

renders a petition incomplete and not to be accorded a filing date.

(emphasis added). Even if the Board were to waive the service rule, Rule 42.105(a),

and thereby effectively make the rule disappear, the non-waivable statutory requirement of 35 U.S.C. § 312(a)(5) would still need to be satisfied. See, e.g., GEA Process, supra., at p. 22 C'Tn order to receive a filing date, the petition must satisfy § 312(a) statutory requirements as of the filing date.")

to waive the requirement of 37 C.F.R. § 42.105(a) and deny Patent Owner’s

motion. Moreover, on these facts, we do not see any need to change the

December 31, 2014, filing date accorded to the Petition. Paper 6. Petitioner,

however, must comply with the Board’s procedural rules for the remainder of this

proceeding."