The Patent Trial and Appeal Board (PTAB) recently denied Teva Pharmaceuticals USA, Inc.'s ("Petitioner") petition for inter partes review (IPR) as being time barred by one day, despite Petitioner's claim that the one day delay was due to technical issues with the PTAB's online filing system.
Petitioner had been served with a complaint asserting infringement of the challenged patents on December 3, 2014, triggering a statutory bar date of December 3, 2015 by which Petitioner had to file its IPR petitions. See 35 U.S.C. § 315(b) ("An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.").
However, Petitioner's IPR petitions were accorded a filing date of December 4, 2015, which Petitioner acknowledged was the date it completed filing the petitions through the PTAB's online Patent Review Processing System ("PRPS"). Petitioner acknowledged that the December 4, 2015 was after the statutory bar date.
Nevertheless, Petitioner requested that the filing date be changed to December 3, 2015 because, it argued, the petitions and exhibits were uploaded to PRPS on December 3, and payment was attempted but not completed until December 4 due to "technical issues." Specifically, Petitioner argued that the PRPS delayed their upload process by "crashing" and "freezing," and by rejecting their attempts to affect electronic payment until just barely after midnight on December 4, 2015. In addition, Petitioner did not serve the petition papers until December 4, 2015, which Petitioner also attributed to the purported technical delays with PRPS.
An IPR petition will not be accorded a filing date until the petition satisfies the following requirements: 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).
While Petitioner acknowledged that its petitions did not satisfy the latter two requirements, Petitioner nonetheless asked the PTAB to exercise its discretion to waive those requirements because, it argued, the technical difficulties caused by PRPS prevented Petitioner from satisfying filing date requirements on December 3, 2015.
The PTAB declined to do so, stating the "based upon our review, Petitioner has not shown that such delays are attributable to the system rather than to the users." Specifically, the PTAB decision noted that Petitioner had not persuasively explained why it waited to upload and file three IPR petitions and their numerous exhibits with little more than two hours remaining before the statutory bar date. The PTAB also noted that the PTAB was not aware of any technical issues with PRPS on the evening of December 3, 2015, and Petitioner had not provided any objective evidence of any such issues during that time.
Regarding the "errors" Petitioner received in attempting payment, the PTAB noted that the payment history in PRPS revealed that Petitioner's initial payment attempts were rejected because in one instance the credit card used exceeded "the maximum daily limit for credit card transactions," and, in another instance, the deposit account initially used had insufficient funds.
Finally, the PTAB found that Petitioner had not provided a reasonable explanation for failing to timely serve Patent Owner, particularly given that Petitioner had not "established that PRPS was not functioning properly on December 3, 2015."
Considering the totality of circumstances, the PTAB determined that Petitioner had not met its burden of establishing that it was entitled to having the filing dates of its IPR petitions changed from December 4 to December 3.
Given their December 4, 2015 filing date, the PTAB found that the IPR petitions were time barred under 35 U.S.C. § 315(b), and denied institution.
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