In Dynaenergetics Europe GmbH and Dynaenergetics US, Inc. v. Qinetiq Ltd., PGR2023-00003, Paper 8 (P.T.A.B. Apr. 13, 2023), the Patent Trial & Appeal Board (“the Board”) denied the Patent Owner’s motion to dismiss Petitioner’s petition for Post-Grant Review (“PGR”) based on defective service and accorded the petition the filing date of the original, defective certificate of service.
Petitioner Dynaenergetics filed its petition on October 4, 2022, which was the last day of the nine-month statutory period to timely file a petition for PGR, and included a certificate of service identifying that the materials were served on Patent Owner QinetiQ at a particular address. Id. at *2. The Office accorded a filing date to the petition of October 4, 2022. Id. However, Petitioner subsequently discovered that it directed service to the wrong law firm and the wrong address and sought to provide service properly after discovering the mistake. Id. at *3. The parties do not dispute that Patent Owner’s counsel received copies of the petition on or before October 13, 2022. Id. The Office authorized Petitioner to file the corrected certificate of service but warned that doing so would accord the PGR petition a filing date of October 12, 2022. Id. at *22. Accordingly, Petitioner did not actually file the corrected certificate of service. Id. at *3.
Patent Owner argued that the petition was incomplete and that a filing date should not be accorded until proper service was effected, and service was not made on the correct address until after the expiration of the nine-month filing period. Id. at *4.
Petitioner argued that the date of service does not affect the filing date, and that it should be entitled to a filing date of October 4, 2022. Id.
In a 2-1 decision, with each judge writing a separate opinion, the PTAB denied Patent Owner’s motion to dismiss and allowed the filing of the corrected certificate of service to relate back to October 4, 2022, thereby according a filing date of October 4, 2022. Id. at *5.
Concurring Opinion by Judge Capp: Judge Capp based his opinion on his view “that the timing of service is regulatory, not statutory and, as such, allows for curing of certain defects under appropriate circumstances. This view upholds the salutary purpose Congress had in mind in creating post-grant review.” Id. at *14.
Judge Capp began with the statutory provisions of 35 U.S.C. § 321(c), explaining that the statute lists what must be provided but does not specify when it must be provided. Id. at *7-*8. Specifically, “[t]he subsection identifies providing copies as a requirement for the petition ‘to be considered.’ It does not, however, explicitly state that copies must be provided before expiration of the statutory filing deadline for the petition ‘to be considered.’” Id. at *8. In Judge Capp’s view, the filing of a petition and the service of a petition should be treated as separate and distinct events, noting that “the Board has separate and distinct rules governing the ‘content’ of a petition and ‘service’ of the petition.” Id. at *10-*11.
Judge Capp stated that, as “a mere regulatory defect,” the error could be corrected as a matter of course and therefore Petitioner’s prompt remedial action cured the technical defect in the service papers, thereby satisfying Section 42.206(a)(2). Id. at *12. Judge Capp also addressed the regulatory requirement that service occur “simultaneously” with the filing of the paper, explaining that a certificate of service, although incorrect, was filed simultaneously with the petition. Id. at *13. In addressing the policy of the law, Judge Capp explained his view that “[g]enerally speaking, the law is better served by allowing legal disputes to be decided on their substantive merits rather than by procedural technicalities. . . . I am not persuaded that Patent Owner will encounter any prejudice by an approximately one-week delay in receiving notice of filing of the petition.” Id.
Concurring Opinion by Judge Saindon: Judge Saindon concurred in the denial of the motion to dismiss, explaining his view that, although the regulatory requirement for the timing of service was not met, “the interests of justice standard to excuse that minor regulatory defect is met.” Id. at *19. Judge Saindon explained that Petitioner met the statutory requirements by serving Patent Owner a copy of the petition on October 12, 2022; however, Petitioner violated § 42.206(b), which requires a complete petition package before “the expiration of the statutory deadline,” because Petitioner did not effect service “on the correspondence address of record.” Id. at *15-*16.
Judge Saindon opined that the Board should allow correction of the regulatory defect, because the error did not relate to a challenge under 35 U.S.C. §§ 101, 102, 103, or 112, and because “the regulations provide for excuse of late actions under 37 C.F.R. § 42.5(c)(3).” Id. at *16-*17. Judge Saindon explained that the defect should be excused “because the defect is due to a clerical error, Petitioner immediately sought to correct the error, Patent Owner identifies no prejudice, there is no impact on our ability to determine whether to institute review, and the proposed punishment is too extreme compared to the violation.” Id. at *19.
Dissenting Opinion by Judge DeFranco: Judge DeFranco dissented from the majority decision denying Patent Owner’s motion to dismiss the petition, explaining his view that “proof of service is a statutory requirement that must be complied with before the petition can be accorded a filing date.” Id. at *20 (emphasis in original). Judge DeFranco argued that evidence of certificate of service is among the listed statutory requirements in 35 U.S.C. § 322(a) and that “in interpreting § 322(a), the Office links statutory compliance expressly to the filing date accorded a petition because, without a filing date, the petition cannot be considered.” Id. at *25-*26.
Judge DeFranco expressed his view that “the Office interprets the term ‘petition’ as used in §§ 321(a) and 322(c) to be one that complies with the statutory requirements.” Id. at *30. Because, in Judge DeFranco’s view, it is a statutory requirement to submit evidence of service on the patent owner, and Petitioner served the documentation on an entity other than Patent Owner, Judge DeFranco opined that Petitioner failed to comply with the statute and the PGR petition was time barred and should be dismissed. Id. at *31, *34.
This case demonstrates the importance of verifying that service is effected on the correct address of record to avoid the risk of the Board according the petition a later filing date. Moreover, this case demonstrates the importance of quicly curing any defect to avoid prejudicing the opposing party, and to increase the likelihood of the Board allowing for correction. Finally, this case shows the Board’s willingness, under some circumstances, to allow parties to cure regulatory defects—either as a matter of course or under the “interests of justice” standard.