Order Regarding Petition Filing Date IPR2014-00367

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Takeaway: In order to be accorded a filing date, a petition must include affidavits or declarations of supporting evidence and opinions as required by 35 U.S.C. § 312(a)(3)(B).

In its Order, the Board accorded the Petition a filing date of January 21, 2014. Also, the Board authorized Petitioner to file a motion requesting that the Petition be accorded an earlier filing date of January 18, 2014, and authorized Patent Owner to file an opposition to any such motion.

Patent Owner had sought authorization to file a motion to dismiss because it believed that the Petition was time-barred under 35 U.S.C. § 315(b). In this connection, Patent Owner alleged that when Petitioner had filed its Petition along with Exhibits January 18, 2014, Petitioner incorrectly indicated in its exhibit list that Exhibit 1109 was the “Declaration of Chris B. Schechter” and incorrectly referred to the exhibit throughout the Petition as a declaration from Mr. Schechter.  Rather than being a declaration from Mr. Schechter, however, Exhibit 1109 submitted with the Petition on January 18, 2014 was a copy of U.S. Patent Application Publication No. 2004/0202872 A1.  Petitioner then filed Mr. Schechter’s declaration – also numbering it as Exhibit 1109, on January 21, 2014.  The Board accorded the Petition a filing date of January 18, 2014.

Petitioner attempted to explain its position in a teleconference with the Board on August 18, 2014. According to Petitioner, it had mistakenly filed the incorrect document as Exhibit 1109 when the Petition was filed on January 18, 2014 (which was a Saturday).  The Office was closed on Monday, January 20, 2014 (due to a Federal Holiday), and so Petitioner telephoned the Board on Tuesday, January 21, 2014, at which time Petitioner maintains that it was instructed to file the correct document.  Patent Owner acknowledges that even though the correct document was not filed until January 21, 2014, Patent Owner was served with a copy of Mr. Schechter’s declaration on January 18, 2014.

It is Patent Owner’s position that Petitioner’s January 18, 2014 filing did not include all “affidavits or declarations of supporting evidence and opinions” as required by 35 U.S.C. § 312(a)(3)(B), the Petition was incorrectly accorded a filing date of January 18, 2014. According to Patent Owner, the Petition should instead be accorded a filing date of January 21, 2014, which would mean that the Petition was not timely filed under 35 U.S.C. § 315(b) within one year of Petitioner being served with a complaint alleging infringement of the challenged patent on January 18, 2013.

Petitioner’s position was that because 35 U.S.C. § 312(a)(3)(B) only requires that a petition “identif[y]” declarations, not actually file them, the January 18, 2014 Petition filing date is correct. Petitioner further maintained that even if the later January 21, 2014 date is the correct filing date, there is no time bar under 37 C.F.R. § 1.7(a) because January 18 was a Saturday, January 19 was a Sunday, and January 20 was a Federal Holiday.  Because Patent Owner indicated that it had not been made aware of all of these points prior to the August 18 teleconference, the Board instructed the parties to discuss these issues among themselves and to contact the Board if any further issues still remain in dispute.

Thus, the position taken by the Board in its Order was that the Petition as filed on January 18, 2014 was deficient under 35 U.S.C. § 312(a)(3)(B) because it did not include a copy of Mr. Schechter’s supporting declaration. Accordingly, the Petition will be accorded a filing date of January 21, 2014.  Nonetheless, the Board authorized Petitioner to file a motion asking that the Petition be accorded the earlier filing date of January 18, 2014.  The Board went on to state that once any motion to change the accorded filing date has been decided, the parties may request a conference call if any issues remain regarding the timeliness of the Petition.  The Board further granted a one-week extension with respect to the Scheduling Order to allow the parties to “take into account the final written decision in related Case IPR2013-00358 involving the same challenged patent.”

SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2014-00367
Paper 21: 
Order on Conduct of the Proceeding
Dated: August 21, 2014

Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffman, and Georgianna W. Braden
Written by: Arbes