When practicing before the Board, every deadline should be viewed as set in stone. The Board’s recent denial of institution in Terremark N. Am. LLC v. Joao Control & Monitoring Sys., LLCIPR2015-01482, demonstrates that it will uphold the statutory time bar even if the petitioner alleges that the Board’s own technical issues prevented the timely filing of the petition.

Under 35 U.S.C. § 315(b), an IPR will not be instituted if the petition is filed more than one year after the petitioner or a corresponding real party in interest is served with a complaint alleging infringement of the patent. This statutory time bar prevents defendants from bringing an IPR in the late stages of litigation.

In Terremark, the patent owner served a complaint for patent infringement on at least one of the petitioning parties on June 23, 2014. The petitioner then attempted to file a petition on the last possible day, but due to alleged technical difficulties, could not file until June 24, 2015—one day after the statutory bar date. In an attempt to cure this clear deficiency, the petitioner filed a motion to recognize June 23, 2015 as the filing date of the petition, presenting several arguments as to why the Board should recognize the earlier filing date. Most importantly, it alleged that the Board’s Patent Review Processing System (PRPS) malfunctioned on the night of June 23, 2015, preventing the upload of any documents. In its motion, the petitioner included screenshots purportedly showing that PRPS was frozen on a “pending” status and would not accept document uploads.

The Board rejected the petitioner’s motion, and denied institution of the petition for failure to comply with the § 315(b) time bar. The Board noted that “a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner.” The petitioner failed to satisfy any of these three requirements. Additionally, the Board noted that screenshots of the PRPS “pending” status were insufficient to show malfunction.

The Board further stated: “Even if Petitioner was able to show that PRPS was malfunctioning with respect to uploading documents, which it did not, Petitioner has not shown persuasively why it was unable to serve to Patent Owner and why it did not pay the filing fee on time.”

Takeaways: This decision highlights that the Board can be very unforgiving of mistakes, unless a party can show that it strenuously tried to comply with all regulations and guidance. Through Terremark, the Board has clarified that the burden to meet a deadline is squarely on the filing party, even if the source of the delay is outside the filing party’s control.

In the event that technical issues prevent filing through PRPS, Terremark provides guidance on how to proceed. First, extensively document the technical issues, such that you can demonstrate that the problem arises with PRPS and not your own computer network. Second, do as much as you can to comply with the Board’s rules, such as paying any applicable filing fee and, if necessary, serving the document on the opposing party. Due to the Board’s rigorous scrutiny, however, the best course of action may be to avoid this situation in the first place, and build in time to recover from the unexpected.