In Micron Tech. v. e.Digital Corp., IPR2015-00519, the Patent Trial and Appeal Board recently held that the petitioner’s timely service by email of its IPR Petition on the patentee’s litigation counsel, but not the counsel of record for the patent (as identified in PTO records), met the service requirements of 35 U.S.C. 312(a)(5).  Therefore, the PTAB denied the patentee’s motion to reject the Petition filing date, which would have resulted in dismissal of the Petition because the one-year deadline after service of a complaint in co-pending litigation had passed, even though the PTAB also found that serving litigation counsel was not sufficient under 37 CFR 42.105(a), which requires service on the patentee or counsel of record for the patent.

The PTAB relied on the discretion provided to it by 37 CFR 42.5(b) and, in that regard, the facts helped the Petitioner.  In particular, evidence showed that the counsel representing the patentee in the IPR, which was different than litigation counsel, actually received the Petition prior to the one-year deadline.  Also, the patentee did not allege any harm in the form of lost evidence or an impaired ability to respond to the Petition as a result of the arguably incomplete service.  Therefore, the PTAB held that the remedy sought by the patentee—essentially dismissing the Petition because the one-year deadline for filing the IPR after service of the complaint in the co-pending litigation had passed—was “out of proportion to Petitioner’s rule violation.”

Although the PTAB denied the patentee’s motion in this instance, the decision underscores the importance of following the regulations relating to IPRs (and CBMs and other proceedings) to the letter.  This was a discretionary decision by the PTAB and, had the facts shown that the patentee had been harmed by the arguably incomplete service, the ruling could have gone the other way and the Petition would have been dismissed.