Takeaway: The Board may excuse a party’s late filing of a paper in the interests of justice, despite not showing good cause for the late filing, where the party would suffer prejudice if the late filing were not excused.

In its Order, the Board excused Petitioner’s late filing of its Reply, which was filed “a few minutes after midnight” the day after the stipulated deadline. The Board held a conference call with the parties and authorized Petitioner, PMI, to file a “motion to deem the filing of the Reply as untimely.” The Board indicated that it appeared the late filing was for “reasons other than technical difficulty,” and desired that “PMI provide testimony in the form of a declaration to explain ‘the entire story’ regarding its late filing.”

Petitioner filed its motion, supported by a declaration of its lead counsel. Lead counsel testified that he instructed his secretary to begin the filing the Reply at 11:40 p.m. EDT the day of the deadline, and that he waited so long because “an error” in the Reply was discovered. He also testified that the process took longer than he expected and that “his secretary’s unfamiliarity with PRPS caused the late filing and further characterizes her delay in completing the filing as resulting from ‘technical’ issues.”

The Board noted that records from PRPS indicate the filing of the Reply with its 26 exhibits took approximately ten minutes.  The Board also noted that metadata in one of the exhibits “suggests that file was generated at 11:51 p.m. EDT, on April 17, just two minutes before [lead counsel’s] secretary started the process of filing the Reply.”

The Board may excuse late action under 37 C.F.R. § 42.5(c)(3) upon “a showing of good cause or upon a Board decision that the consideration on the merits would be in the interests of justice.” The Board held that Petitioner did not show good cause for excusing the late action, but nevertheless granted the Motion “in the interests of justice.” In particular, the Board disagreed with the contention that Petitioner began the filing process “in time to complete the filing before the deadline.” The filing process was started at 11:53 p.m. EDT, only seven minutes before the deadline, which the Board found to be unreasonable in light of the 27 documents that were to be uploaded. The Board also held that no evidence suggested that PRPS impeded the filing, and that Petitioner “was simply too late finishing the Reply and the supporting documents to support a timely filing.” The Board also found that lead counsel’s “explanation that his secretary was responsible for the tardiness of the filings is not fair to his secretary.” Rather, the Board found that filing 27 documents in only ten minutes “suggests that she performed her tasks competently and without delay.”

Petitioner also argued that the late filing should be granted in the interests of justice, noting that Patent Owner suffered no prejudice in the late filing and that denying the Motion would deprive Petitioner’s ability to respond to Patent Owner’s arguments. The Board agreed, and accordingly, granted Petitioner’s Motion.

Pacific Market Int’l, LLC v. Ignite USA, LLC, IPR2014-00561, 00750
Paper 40: Order Excusing Late Filing of Papers
Dated: May 12, 2015
Patents: 7,997,442 B2; 7,546,933 B2
Before: Josiah C. Cocks, Mitchell G. Weatherly, and James A. Worth
Written by: Weatherly