Under 37 C.F.R. 42.5(b), the Board may waive or suspend requirements of parts 1, 41 and 42 of chapter 37 of the C.F.R. Below are PTAB cases addressing requests by the parties to waive or suspend the applicable rules.
Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2013-00631, Paper 20 (PTAB Apr. 16, 2014). The Board authorized petitioner to correct its non-compliance with statutory and regulatory provisions, and maintain the original filing date of the petition. Petitioner did not provide to the Board or patent owner copies of foreign patents relied upon in the petition, as required by 35 U.S.C. §§ 312(a)(3) and 312(a)(5). Petitioner filed and served translations of the foreign patents, but did not file or serve the original foreign patents. In the institution decision, the Board granted petitioner’s motion to correct the petition. The Board was persuaded by petitioner’s counsel that the error was unintentional and inadvertent, and indicated that the error was clerical in nature and correctable under 37 CFR 42.104(c). In a decision denying rehearing (paper 20), the Board stated “[w]e determine that the requirements for obtaining a filing date are defined by regulation, not statute, and that [petitioner] satisfied the requirements for obtaining a filing date on September 27, 2013, by identifying all patents upon which its challenges were based and supplying copies of those references, or a translation of the references, to [patent owner]… Contrary to [patent owner’s] contention, § 312 does not expressly address the standards by which the Board accords a filing date to a petition. Instead, 35 U.S.C. § 312 specifies the requirements that a petition must meet so that it ‘may be considered’ by the Board.” The Board also indicated that petitioner’s failure to comply with the statutory requirements did not have a material effect on patent owner’s ability to file a preliminary response to the petition.
Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00355, Paper 9 (PTAB June 26, 2015). The Board noted that it could have denied the petition because petitioner did not identify all related matters it was aware of, in violation of 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4). The Board declined to deny institution for these grounds, instead denying the petition for reasons with respect to the prior art challenges.
Int’l Internet Techs. v. Sweepstakes Patent Co., LLC, CBM2015-00105, Paper 29 (PTAB Mar. 1, 2016). The Board denied petitioner’s motion to expunge patent owner’s motion to exclude evidence. Petitioner argued that the motion to exclude was untimely because patent owner did not timely serve objections to the evidence prior to filing the motion to exclude. Patent owner admitted that patent owner’s motion to exclude is non-compliant under 37 C.F.R. § 42.64(b) because of a docketing mistake and subsequent human error. Pursuant to 37 C.F.R. § 42.5, the Board waived the service requirements under 37 C.F.R. § 42.64(b), finding that the interests of justice favored patent owner’s request.
Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2015-01309, Paper 16 (PTAB Mar. 18, 2016). The Board authorized patent owner to file a motion to terminate or, in the alternative, to reset the filing date of the petition after petitioner filed an updated mandatory notice identifying five new real parties-in-interest (RPIs). A time-bar under 35 U.S.C. § 315(b) was not at issue in this proceeding. The panel requested briefing on whether the RPI identification in the petition affects the filing date of the petition. The Board required the parties to address the following two issues: (1) why, and under what authority, the Board can or should reset the filing date of the petition to the date on which the updated mandatory was filed, and what filing date should be given to the Decision to Institute; and (2) whether the Board has authority to waive its rules to permit the petitioner to update its RPI identification without resetting the filing date of the petition.
Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00275, Paper 15 (PTAB June 9, 2016). The Board denied petitioner’s motion to change the filing date of the petition, which was filed shortly after the one-year statutory bar had passed. Petitioner alleged that PRPS froze and it could not complete the filing of the petition. Despite the reported issues with PRPS, the Board denied petitioner’s motion because petitioner did not serve the petition on patent owner in accordance with 37 C.F.R. § 42.106(a)(3) within the one-year period, and did not file a complete petition within the statutory period of 35 U.S.C. § 315(d). The Board determined that petitioner failed to show good cause to justify the Board waiving the filing date requirements, because petitioner waited until the last day to file the petition and did not serve patent owner within the required time period even if petitioner had technical problems with PRPS.
Sony Corp. v. Raytheon Co., IPR2015-01201, Paper 47 (PTAB June 15, 2016). The Board authorized petitioner to increase the word count in its reply to 7,000 words. Petitioner informed the Board that a significant portion of patent owner’s response is dedicated to arguments regarding prior invention, which is not a subject petitioner would have been able to address in its petition. Petitioner sought 9,000 words. Patent owner agreed to a limited expansion of the word count, but indicated that increasing the word count to 9,000 was not warranted.