United States: Delayed Payment Proves Fatal For Cultec's PTAB Challenge

Under 35 U.S.C. § 315(b), a petition for inter partes review (IPR) may not be filed more than one year after the date on which the petitioner was served with a patent infringement complaint. Thus, a petition must meet all of the filing requirements of 37 C.F.R. 42.106 prior to the one year bar to be considered for institution.

An IPR petition under 37 C.F.R. 42.106 must: (1) include all required content as outlined in section 42.104; (2) be effectively served on the patent owner; and (3) be accompanied by the institution fee. If a petition fails to meet all of these requirements, no filing date will be accorded until the deficiencies are corrected. If such a failure is not remedied before the § 315(b) one-year bar kicks in, the petitioner may lose all chances for a PTAB challenge.

This was the case in Cultec, Inc. v. StormTech LLC (IPR2017-00526). After missing the filing deadline by one day due to alleged "technical difficulties" when paying the institution fee, Cultec was statutorily barred from pursuing an IPR.

On January 5, 2016, Cultec was served with a complaint alleging that its plastic stormwater chambers infringed plaintiff StormTech's patent. Pursuant to 35 U.S.C. § 315(b), Cultech had until midnight on January 5, 2017 to petition for an IPR to challenge the validity of the asserted patent. On the day of the deadline, Cultec filed and served the petition, but was unable to pay its $25,600 fee on time (standard $23,000 IPR fee, plus $2,600 in excess claim fees) because of "difficulties with the PTAB E2E System." Cultec managed to pay the fee the next day, and was awarded a filing date of January 6, 2017—one day outside of its one-year window to file.

All was not yet lost, however. Under 37 C.F.R. 42.5, the PTAB has discretion to change the filing date of petitions if such a change would "secure the just, speedy, and inexpensive resolution of [the] proceeding." The PTAB has used this power multiple times to accord new filing dates, such as in 2Wire, Inc. v. TQ Delta LLC (IPR2015-00239). There, counsel pressed the "submit" button after midnight when filing its client's IPR petition. The PTAB, however, granted the petitioner's motion to correct the filing date because all three filing requirements were met. In particular, the PTABdetermined that all documents were timely uploaded and served and that the fees were paid.

Hoping to receive a similar decision to that in 2Wire, Cultec moved to accord a filing date of January 5, 2017, citing technical difficulties with the payment system as the reason for missing the deadline. As the moving party, Cultec had the burden of proof under 37 C.F.R. 42.20(c) to establish that it was entitled to the requested relief. The PTAB found that Cultec failed to meet that burden.

In reaching its decision, the PTAB outlined Cultec's several unsuccessful attempts to pay its fee between 7:00 p.m. and midnight on January 5th. The first payment attempt was by credit card at 7:10 p.m., and was denied because the order exceeded the "United States Department of the Treasury's credit card daily limit of $24,999.99." The receipt for the first attempt stated in bold: "Your Payment Has Not Been Cleared for AIA Review IPR2017-00526! Please call system administrator with any questions[.]" However, on the second page of the receipt, the payment status was listed as "in process," which Cultec thought meant the payment would nonetheless be accepted. The PTAB found this thought unreasonable because of the explicit warnings given.

Cultec then checked on the status of the payment four hours later at 11:00 p.m.—a wait that the PTAB found unreasonable in itself in light of the uncertainty of the earlier payment status. Cultec made attempts to pay the fee again—two by deposit account, each of which were rejected due to "insufficient funds," and two by a personal debit card, both of which failed because the card authorization was declined.

The PTAB found that these unsuccessful payment attempts demonstrated a lack of understanding of proper payment processes, a lack of understanding of personal account balances, and an unreasonable lack of diligence in checking payment statuses. More importantly, Cultec did not provide any proper evidence that PTO's payment system had technical difficulties—the very assertion they had the burden to prove. As such, Cultec's motion was denied and its IPR petition was time-barred.

It is evident that the PTAB is unsympathetic to parties who miss deadlines due to last minute filings. In denying Cultec's motion, the PTAB cited Teva Pharm. USA, Inc. v. MonoSol Rx, LLC, (IPR2016-00281) where the petition was uploaded and served on December 3, 2015, but the payment was not completed until 12:09 a.m. the next day because of alleged "technical issues" with the PTAB's e-filing system. Similar to Cultec's issues, the petitioner's delayed payments in Teva resulted from a credit card transaction that exceeded the daily limit, the use of an invalid credit card account, and the use of a deposit account with insufficient funds. In denying the petitioner's request to change the filing date of the petitions to December 3, 2015, the PTAB concluded that "[a]ny prejudice to Petitioner was created by Petitioner's own delay," and "had Petitioner not [waited until the last minute], any alleged delays caused by 'technical issues' would have been moot."


In light of these PTAB decisions, petitioners with concurrent litigation should be mindful of the one year bar, and leave ample time to deal with unexpected issues that may arise upon filing. Those that fail to do so will most likely meet the same fate as the petitioners in Teva and Cultec, and be time-barred from pursuing PTAB challenges.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.