Granting in Part Request for Rehearing IPR2013-00624


Takeaway: The Board cannot waive statutory requirements for filing a petition, but is allowed to waive regulations related to filing a petition.

In its Order, the Board denied in part Patent Owner’s Request for Rehearing regarding the Board’s decision to grant Petitioner’s Motion to Correct the petition’s filing date. However, Patent Owner’s request was only granted to the extent the Board modified its prior decision to exercise discretion under 37 C.F.R. § 42.5(b). The Board’s prior decision granted Petitioner’s request to accord the petition a filing date as of when the petition files were uploaded (September 25, 2013) rather than the date when Petitioner actually clicked on the “Submit” button in the Patent Review Processing System (“PRPS”) (October 2, 2013).
The same panel of judges reviewed its prior interlocutory decision under an abuse of discretion standard. See 37 C.F.R. § 42.71(c). The standard may be met “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Patent Owner raised four arguments: (1) Petitioner’s renewed motion and supporting evidence do not demonstrate that Petitioner made a clerical error under 37 C.F.R. § 42.104(c); (2) the Board abused its discretion by substituting its own facts for Petitioner’s testimony in finding a clerical error; (3) failing to “Submit” a petition is not a clerical error that is correctable under 37 C.F.R. § 42.104(c); and (4) the statutory requirements for filing a petition under 35 U.S.C. §§ 312(a) and 315(b) cannot be waived.

Addressing the first two arguments, the Board indicated that the record supported the finding that a clerical error had been made. Contrary to Patent Owner’s argument, the Board held that relief under 37 C.F.R. § 42.104(c) may be appropriate whether the party making an error in the petition admits to the error or not. The Board reaffirmed its decision despite the apparently inconsistent supporting declarations filed by Petitioner, upon which Patent Owner relied in its request for rehearing. As the Board indicated, the declarations were accorded little weight in light of the weight of evidence supporting its findings.

With regard to the fourth argument, the Board maintained its initial position that the petition and all its supporting documentation and fee payments satisfied the requirements of 35 U.S.C. § 312(a) as of September 25, 2013, despite not clicking “Submit” until October 2, 2013.

The Board then modified its prior decision, adding that relief was being granted under 37 C.F.R. § 42.5(b) by exercising its discretion “to waive the regulatory requirement that electronic filing is completed only upon clicking the ‘Submit’ button in PRPS.” The Board agreed with Patent Owner’s argument that according to 37 C.F.R. § 42.6(b)(1), a petition is not filed electronically until the “Submit” button in PRPS is clicked. Nevertheless, the Board decided to exercise its discretion to waive or suspend that parameter for electronic filing. As a consequence, and because the statutory requirements had been met by the papers filed on September 25, 2013, the Board affirmed its decision according the petition that filing date.

ConMed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624
Paper 22: Decision on Patent Owner’s Request for Rehearing
Dated: March 14, 2014
Patent 6,500,195 B2
Before: Michael R. Zecher, Benjamin D. M. Wood, and Mitchell G. Weatherly
Written by: Zecher