Recently, we discussed a decision in which the Board upheld the statutory time bar and denied institution in spite of the petitioner’s arguments that technical difficulties rendered timely filing impossible. In a subsequent decision, the Board reached the opposite conclusion and demonstrated that under certain rare circumstances, a party’s failure to file within the mandated time period is not fatal.

Terremark N. Am. LLC v. Joao Control & Monitoring Sys., LLCIPR2015-01482, the Board held that the petitioner (1) did not provide sufficient evidence that a technical malfunction prevented timely filing; and (2) did not take adequate measures to remedy the delay. Then in Kapsch TrafficCom IVHS Inc. v. Neology, Inc.IPR2015-00814, the patent owner filed a motion requesting that the Board deem the response and accompanying exhibits timely filed. The patent owner clearly learned from the lessons ofTerremark, and avoided the pitfalls that doomed the petitioner in the previous case. Accordingly, the Board granted the patent owner’s motion.

In Kapsch, the patent owner failed to file a response by the due date agreed upon by the parties. Notably, the Board may have viewed this failure as less egregious than a petitioner’s failure to accommodate the § 315(b) time bar. Nevertheless, the Board applied the analysis laid out in Terremarkto allow the delinquent filing. The patent owner alleged that it began the process of filing the response and accompanying exhibits on the due date, but technical issues with the Board’s Patent Review Processing System (PRPS) caused some documents to be filed after midnight. Upon realizing that technical issues could delay the filing, the patent owner served the response and accompanying exhibits on the petitioner prior to the deadline. The Board held that the patent owner’s documentation of the technical issues afflicting PRPS constituted good cause for the late filing, and that the patent owner engaged in a good faith effort to remedy the problems by serving the documents on the petitioner in a timely manner.

Takeaways: The patent owner followed the Board’s instructions to cure a delinquent filing as laid out in Terremark, and as a result the late filing was not fatal to the patent owner’s defense. If faced with technical delays that threaten timely filing, a party should (1) extensively document the technical malfunction, and (2) immediately serve all documents on the opposing party. As Kapsch merely involved a stipulated deadline, it remains to be seen whether the Board would conclude that such conduct remedies a failure to meet the statutorily-mandated § 315(b) time bar.