Attorneys handling an IPR should never be neglectful, of course, but the director of the US Patent and Trademark Office (USPTO) recognizes that neglect in some circumstances is excusable. In a recent IPR, the USPTO determined that the patent owner’s late filed appeal was “excusable neglect”—i.e., not good, but not so bad that the patent owner should lose the right to appeal. Rather than inviting anyone to disregard deadlines, this case is a reminder for attorneys to avoid problems by communicating clearly with clients and co-counsel.
The circumstances leading to the late appeal illustrate a common scenario. The patent owner had both domestic and foreign counsel who both were waiting on the other to do something. Domestic counsel was waiting for confirmation to file the appeal following IPR; foreign counsel thought that appeal would be filed without further follow up. Neither clarified the instructions, and so no appeal was filed.
Ultimately, in the IPR, Mitsubishi Cable Industries Ltd. and Goto Denshi Co. Ltd. (IPR2015-01108), the USPTO granted the patent owner’s request for an extension of time to appeal to the Federal Circuit due to the attorneys’ “excusable neglect.” Significantly, the USPTO decided that an untimely notice of appeal does not deprive it of jurisdiction to decide a request to extend the time available for seeking judicial review.
In connection with ongoing litigation relating to specialized coils of wire used in electronic devices, the final written decision found all eight claims of the challenged patent invalid. After denial of the patent owner’s request for rehearing, the patent owner had 63 days (until March 14, 2017) to appeal the decision to the Federal Circuit, but failed to do so.
When the attorneys figured out what happened, the patent owner requested additional time and filed notices of appeal to both the PTAB and the Federal Circuit. The USPTO granted the patent owner’s request to extend the deadline for appeal. In its decision, the USPTO found that precedent did not clearly deprive it of jurisdiction when a notice of appeal is untimely. The USPTO credited the patent owner’s contention that the late appeal was due to excusable attorney miscommunication and no prejudice to the petitioner would result from the extension.
While this decision illustrates that appeal deadlines have exceptions, the real lesson should be that clear communication avoids many issues. True, a party that misses a deadline to appeal IPR may be able to appeal nonetheless. The broader lesson is that attorneys should avoid putting clients in that position. Effective communication, especially about case-critical issues like whether and when to appeal, should be considered mandatory by every counsel. And clients should not expect any less.