Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.”

The Board first reviewed relevant statutory sections and rules. Together, 35 U.S.C. § 312(a)(5) and 37 C.F.R. § 42.105(a) provide that a petitioner must serve a copy of a petition for inter partes review and supporting evidence on the patent owner at the “correspondence address of record for the subject patent” and “may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.” The rules further provide that the petition “will not be accorded a filing date until the petition satisfies the requirement of effecting ‘service of the petition on the correspondence address of record as provided in 37 C.F.R. § 42.105(a).’” Additionally, under 35 U.S.C. § 315(b), IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”

The Board then summarized the circumstances relating to service of the petition in this proceeding. The underlying district court complaints were filed on December 30, 2013 and allegedly served on January 16, 2014. The Petition for Inter Partes Review was filed on December 31, 2014, and accorded a filing date of December 31, 2014. According to Petitioner, on the same day, a copy of the Petition and supporting materials was served on (a) Patent Owner’s litigation counsel of record, and (b) a law firm that was the correspondence address of record for the patent at issue until October 17, 2014. E-mail correspondence between Petitioner’s counsel and Patent Owner’s counsel indicates that Patent Owner’s litigation counsel was in receipt of the documents at least as early as January 5, 2015. As of the date of the motion, Petitioner still had not served Patent Owner with a copy of the Petition at the law firm that has been identified as the correspondence address of record since October 30, 2014.

Patent Owner argues that (A) the Petition is not entitled to a filing date at this time; and (B) Petitioner’s failure to file a complete petition requires dismissal for failure to meet the one-year filing requirement.

Petitioner responds that (A) Petitioner effectively served Patent Owner before January 16, 2015; and (B) the circumstances of this case do not warrant changing the filing date or dismissal of the Petition, because (1) Petitioner acted in good faith; and (2) Patent Owner cannot show any prejudice.

The Board concluded that, based on the evidence presented, “Petitioner has provided Patent Owner with copies of the required documents.” The Board explained that the statute requires only that a petitioner provide copies of the required documents “to the patent owner or, if applicable, the designated representative of the patent owner.” In addition, according to the Board, “the parties appear to agree, and the evidence supports, that Petitioner provided copies of the required documents to a designated representative of Patent Owner in a timely manner,” thus satisfying the statutory requirement.

However, the Board also expressed its agreement “with Patent Owner that Petitioner’s service of the Petition and supporting documents to [the law firm that was Patent Owner’s previous correspondence address] failed to comply with 37 C.F.R. § 42.105(a)” and noted that “[t]he correspondence address of record for a patent can be discovered simply by entering the number of the patent into the USPTO’s web-based Patent Application Information Retrieval (PAIR) portal.”  The Board further stated that “[r]elying on the notice of service attached to an earlier petition filed by another party in lieu of consulting the Patent Office database to determine the correspondence address of record is not a good faith attempt to comply with Rule 42.105(a).” As explained by the Board, however:

Because Petitioner has complied with 35 U.S.C. § 312(a)(5); because counsel participating in this proceeding on behalf of Patent Owner actually received the Petition prior to the expiration of the one-year bar set forth in 35 U.S.C. § 315(b); and because Patent Owner does not allege that its time to respond to the Petition or its access to evidence has been affected meaningfully by Petitioner’s failure to comply, the remedy Patent Owner seeks (effectively, dismissal of the Petition with no opportunity to re-file) is out of proportion to Petitioner’s rule violation.

Accordingly, the Board exercised its discretion to waive the requirement of Rule 42.105(a) and denied Patent Owner’s motion. The Board concluded its analysis with an admonishment that Petitioner “must comply with the Board’s procedural rules for the remainder of this proceeding.”

Micron Technology, Inc. v. e.Digital Corporation, IPR2015-00519
Paper 14: Order on Conduct of the Proceeding
Dated: March 24, 2015
Patent: 5,839,108
Before: Lynne E. Pettigrew, David C. McKone, and Kristina M. Kalan
Written by: Kalan