The decision by the Patent Trial and Appeal Board illustrates the dangers in waiting until the last day of the one-year statutory bar to file a petition, and the importance of double checking the filed documents on the PTAB’s website to ensure that the petition and its supporting documents were correctly filed before the one-year statutory bar is triggered.
A panel of Patent Trial and Appeal Board (PTAB) judges recently held that a petition for inter partes review was time barred by the one-year statutory bar under 35 USC § 315(b) after a petitioner’s counsel mistakenly uploaded a duplicate copy of its power of attorney instead of the petition document. Petitioner moved to correct the filing under 37 CFR § 42.104(c) without losing the initial filing date, but the PTAB denied the motion because the mistake did not relate to any clerical or typographical error “in the petition” itself. Thus, petitioner could not file the corrected petition and still maintain its original filing date, and consequently, the corrected petition was time barred.
When Congress passed legislation in 2012 introducing inter partesreviews (IPRs) as a way to streamline patent validity disputes, it placed several important limitations on the availability of those proceedings. One such limitation is found in 35 USC § 315(b), which provides that an IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Since 2012, the PTAB has issued several significant decisions exploring the boundaries of this one-year statutory bar. For example, the PTAB previously determined that voluntary dismissal of a complaint does not negate application of the one-year statutory bar to filing a petition. It also found that the one-year statutory bar applies to a complaint regardless of whether that complaint is ultimately found to be deficient for lack of standing.
Recently, in Thryv, Inc v. Click-To-Call Techs., LP, the US Supreme Court held that the PTAB’s interpretation of Section 315(b) and its determination whether to apply the one-year statutory bar in a particular proceeding are not subject to judicial review on appeal. Although many of the cases that were vacated and remanded by Thryv have yet to be decided on remand, the case confirms it is critical that petitioners timely file their petitions before the one-year statutory bar deadline.
In Varian Medical Sys., Inc., v. Best Medical Int’l, Inc., the PTAB was confronted with the question of whether to apply Section 315(b)’s one-year statutory bar to a situation where a legal assistant of petitioner’s counsel mistakenly uploaded a wrong document in place of the petition, and thus, no petition was filed before the one-year statutory bar date. The PTAB applied Section 315(b) and found the petition statutorily barred. The PTAB rejected the petitioner’s attempts to rely on 37 CFR § 42.104(c) as a means to correct the petition without losing the initial filing date.
The petitioner was served with a complaint alleging infringement on October 18, 2018. Exactly one year later on October 18, 2019, and at 11:49 pm ET, petitioner's counsel forwarded their legal assistant the petition to be filed in support of the IPR. At 11:51 pm ET the same day, the legal assistant mistakenly filed a duplicate copy of the power of attorney instead of the correct petition document. Petitioner's counsel noticed the mistake three days later. Petitioner thus failed to file the petition for IPR within Section 315(b)’s one-year statutory bar timeframe.
Petitioner sought leave to file the correct petition document under 37 CFR § 42.104(c), which permits motions to correct “clerical or typographical mistake in the petition" without losing the petition's filing date. As support for its motion, the petitioner cited a prior PTAB decision in ABB Inc. v. ROY-G-BIV Corp., where a single judge held that the filing of a wrong petition constitutes a clerical error that may be corrected under Rule 104(c). In response, the patent owner argued that Rule 104(c) did not apply because its plain language refers to issues found “in the petition,” whereas the petitioner here failed to timely file any petition in the first instance.
The PTAB agreed with the patent owner finding that Rule 104(c) did not apply under “the particular facts of this case involving no timely filed petition. . . .” The PTAB distinguished the decision in ROY-G-BIV because there the petitioner had filed a petition in support of the IPR within the statutory timeframe, albeit the wrong petition. In the case at hand, the petitioner failed to file any petition, and, therefore, there was no mistake “in the petition" to correct under Rule 104(c).
The PTAB’s decision illustrates the dangers in waiting until the last day of the one-year statutory bar to file a petition, and the importance of double checking the filed documents on the PTAB’s website to ensure that the petition and its supporting documents were correctly filed before the one-year statutory bar is triggered. Understanding and being aware of PTAB decisions interpreting provisions surrounding the institution of IPRs, including Section 315(b), is likely going to become ever more critical following the US Supreme Court’s holding in Thryv, Inc v. Click-To-Call Techs., LP.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (Silicon Valley), Nicholas A. Restauri (Chicago), or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Christopher D. Bright
Louis W. Beardell, Jr.
Brent A. Hawkins
 35 USC § 315(b).
 Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 52 (October 28, 2014), vacated and remanded Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC, 899 F.3d 1321 (Fed. Cir. 2018), cert. granted in part sub nom. Dex Media, Inc. v. Click-To-Call Techs., LP, 139 S. Ct. 2742, 204 L. Ed. 2d 1129 (2019), and vacated and remanded sub nom. Thryv, Inc v. Click-To-Call Techs., LP, No. 18-916, 2020 WL 1906544 (U.S. Apr. 20, 2020).
 GoPro Inc. v. 360Heroes Inc., IPR2018-01754, Paper 38 (Aug. 23, 2019).
 No. 18-916, 2020 WL 1906544, at *8, __ S. Ct. ___ (U.S. Apr. 20, 2020).
 IPR2020-00075, Paper 13 (May 1, 2020).
 37 CFR § 42.104(c) (emphasis added).
 IPR2013-00063, Paper 21 at 6-7 (PTAB Jan. 16, 2013).
 IPR2020-00075, Paper 8 (November 27, 2019).
 Id., Paper 13 at 7.