Institution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed before the midnight deadline.

In an order entered on May 23, 2016, institution was denied in both proceedings as barred by the one year statutory bar of 35 U.S.C. 315(b). Teva Pharmaceuticals USA, Inc. v. Monosol RX. LLC, IPR2016-00281 and IPR2016-00282. The parties agreed that a Complaint had been served on December 3, 2014 in Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, et al v. Teva Pharmaceuticals USA, Inc., Civil Action 14-1451 (D. Del.). Indivior Inc., formerly known as Reckitt Benckiser Pharmaceuticals Inc., was identified as the exclusive licensee of Monosol’s patents at issue.

Accordingly, the statutory bar date for IPR281 and IPR282 was December 3, 2015. Petitioner’s law firm began the process of electronically filing the petition documents for three separate IPRs at 9:45 p.m. eastern time on that date. After experiencing technical difficulties, a filing receipt for the papers filed the first proceeding IPR2015-00280 was issued at 11:11 p.m. The technical difficulties continued and, after petitioners submitted the documents for IPR281 and IPR282, the related payments were rejected. The payment receipt for IPR281 ultimately issued at 12:01 a.m. and the payment receipt for IPR282 issued at 12:09 a.m.

Waiting until the last minute—without explanation—is ill advised and had Petitioner not done so, any alleged delays caused by ‘technical issues’ would have been moot.

Hard copy documents were not sent to Federal Express until 3:02 a.m. and Patent Owner Monosol RX asserted that those copies were incomplete. The certificate of service was not changed after filing was complete and still stated that service was on December 3.

As the Board explained, under the regulations a petition will not be accorded a filing date until it satisfies the following: (1) the content of the petition complies with 37 C.F.R. § 42.104, (2) the fee to institute has been paid, see 37 C.F.R. §§ 42.15(a), 42.103(b), and (3) the petition and relevant documents have been served on the patent owner. 37 C.F.R. § 42.106(a). The Petitioner did not dispute that December 4 filing date accorded to the petitions accurately reflected the date that petition filing, payment, and service were all completed.

In an attempt to avoid application of the statutory bar, the Petitioner filed a Motion to “correct” the filing date, which the Patent Owner opposed. The Board noted that, because the filing date accorded was actually correct, the Petitioner was instead seeking to “change” the filing date.

The Board was not convinced by the declarations of the individuals involved in Petitioner’s filing, noting that the Board was unaware of any technical difficulties on that day and that Petitioner had provided no objective evidence of the technical difficulties. Although the declarants stated that they received an error message, they did not describe the message or provide a screenshot of it. With respect to the payment refusals, the Board stated that the refusals were not caused by technical difficulties, but because one of the credit cards used was over its daily limit and one deposit account did not have sufficient funds.

The primary lesson from this decision can be summed up in one sentence of its order – “Waiting until the last minute—without explanation—is ill advised and had Petitioner not done so, any alleged delays caused by ‘technical issues’ would have been moot.” However, in the event that one experiences technical difficulties when trying to meet a Board deadline, this order also counsels that one should capture screen shots recording the difficulties. Additionally, we can assume from this order that being even one minute late in electronically filing will not be excused by the Board absent solid evidence that the delay was out of the filer’s control.

In the related proceeding, IPR2016-00280, the December 3 filing date was accorded because the electronic filing was complete at that time. The Patent Owner has filed a motion to Change the Filing date to December 4 since service was not completed on the 3rd. As of the date of this post, no order has issued on that motion.