The PTAB recently stood firm in denying a petitioner’s motion to change the filing dates of two IPR petitions that missed a statutory deadline by less than ten minutes. Case IPR2016-00281 and IPR2016-00282 (Patents 8,603,514 B2 and 8,017,150 B2). The petitioner, Teva Pharmaceuticals USA, Inc., was facing a 1-year statutory IPR filing deadline of December 3, 2015, set by a complaint alleging patent infringement served on Teva a year earlier.
A legal assistant handling the IPR filings started filing the IPR petitions at 11:11 pm on December 3, 2015, after facing technical difficulties with an unrelated petition that the legal assistant filed first that evening. The technical difficulties continued while the legal assistant was filing the Teva petitions. These technical difficulties included slow processing, frozen screens, and rejected payments. The USPTO Patent Review Processing System (“PRPS”) eventually issued filing notifications for the two IPR petitions at 12:01 AM and 12:09 AM on December 4, one day after the statutory deadline.
The Board noted two major considerations that hurt Teva’s case. First, under the relevant rule a petition is given a filing date upon completing two additional requirements besides timely filing the petition. The petition must also be served on the patent owner and the applicable fee must be paid. 37 CFR 42.106(a). Neither of the two additional requirements were met before the clock struck 12 midnight on December 3. The Board was not swayed by several decisions Teva had cited supporting its motion to change the filing date, because none of those decisions involved a failure to satisfy all three requirements of 37 CFR 42.106(a).
Second, the Board noted that Teva had not provided objective evidence, such as screen shots or descriptions of error messages, that the technical difficulties were solely do to the PRPS and not due to problems unrelated to PRPS. Indeed, some evidence showed technical problems arising from Teva’s use of an invalid credit card account and a deposit account with insufficient funds.
This decision highlights the need to avoid last-day filings because the Board may not be readily persuaded to show mercy to the late-filer. In distinguishing earlier decisions sympathetic to the late-filing petitioner, the Board noted that the decisions were non-precedential, suggesting that the Board would retain its discretion to grant or deny motions on more similar facts. The Board also commented on Teva’s lack of explanation for why the petitioner started filing the petitions so close to the deadline, although the Board gave no indication as to what sorts of reasons might have been persuasive.
It would probably also be a good idea to instruct personnel working on last-day filings to make a record of all error messages and technical problems. Finally, once it became clear that it was possible the deadline could be missed, Teva could have put itself in a better position by minimizing the number of omissions, e.g., by paying the petition fee and serving the petition on the patent owner before filing the petition.