The decision by the Patent Trial and Appeal Board illustrates the dangers in waiting until the last day of the one-year statutory bar to file a petition, and the importance of double checking the filed documents on the PTAB’s website to ensure that the petition and its supporting documents were correctly filed before the one-year statutory bar is triggered.A panel of Patent Trial and Appeal Board (PTAB) judges recently held that a petition for inter partes review was time barred by the one-year statutory bar under 35 USC § 315(b) after a petitioner’s counsel mistakenly uploaded a duplicate copy of its power of attorney instead of the petition document. Petitioner moved to correct the filing under 37 CFR § 42.104(c) without losing the initial filing date, but the PTAB denied the motion because the mistake did not relate to any clerical or typographical error “in the petition” itself. Thus, petitioner could not file the corrected petition and still maintain its original filing date, and consequently, the corrected petition was time barred.

Kingston Technology Company, Inc. v. SPEX Technologies, Inc., IPR2017-00824 (Paper 8) (PTAB August 17, 2017). Specifically, the Board found that Kingston had (1) not met its burden under 37 C.F.R. § 42.104(b)(3) of identifying specific portions of the patent specification that describe the structure corresponding to the claimed functions of certain means-plus-function claim terms and (2) failed to perform any structural comparison demonstrating that the structure in the patent specification was the same or equivalent to structures in the prior art. The Board concluded that these failures were fatal to Kingston’s petition with respect to claims 1-3, 6-8, 11-15, 23-28, and 36, 37 and 39.

CallMiner, Inc. (“CallMiner”) petitioned for IPR of the ‘639 Patent, asserting therein that the challenged claims recited several means-plus-function limitations, specifically limitations reciting the term “a code segment for . . . .” The petition included a table allegedly identifying the proposed function and structure of the means-plus-function limitations, but the Board held that this fell short of the claim construction requirements of 37 C.F.R. § 42.104(b)(3).Section 42.104(b)(3) requires identification of the corresponding structure in the specification for means-plus-function terms. The Petitioner’s table identified the alleged function of each of the means-plus-function terms in bold italics, and merely listed string cites to broad portions of the patent specification to identify the alleged structure.

In a final written decision of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) finds the petition did not meet statutory and regulatory requirements (including 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.104(b) and 42.22(a)(2))1 and slams the petitioner for varying its positions throughout the proceeding.

The Board eventually acquiesced, but refused to change the petition filing date, on the grounds that this would both "promote[] the core functions" from the PTAB Trial Practice Guide as well as "serv[ing] the interests of justice." Mayne Pharma argued that the PTAB's own rules, specifically 37 C.F.R. § 42.104, permitted amendments to the petition without penalty regarding the filing date only for "clerical or typographical mistakes," which was not the case here. Merck argued that the issue was beyond the scope of Federal Circuit review under § 314(d) and consistent with the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

The Board found that Petitioner failed to present any evidence showing a change in the ordinary meaning of the disputed term from the earlier definition on which the Board relied to the time of the invention. InOrthoPediatrics Corp. et al v. K2M, Inc. et al, IPR2018-01547, Paper 9 (Feb. 22, 2019), the Board denied the Petition for failing to comply with 37 C.F.R. § 42.104(b)(3) because the Petitioner did not set forth how each challenged claim is to be construed. The Petition argued that the challenged claims should be given their broadest reasonable construction, but in district court litigation, the Petitioner argued that the claims should be construed pursuant to § 112 ¶ 6 as means-plus-function claims.

9Id., at 51345.10 37 C.F.R. § 42.104(b)(3); see also, 37 C.F.R. § 42.104(b)(3) (post grant review petition); 37 C.F.R. § 42.

Instead, Redline admitted to the PTAB that it intentionally delayed filing the declaration since it was cost-effective for its expert to opine only on the instituted grounds rather than all the grounds alleged in the petition. The court noted that, while supplemental evidence may be submitted under 37 CFR 123, 37 CFR 42.104 requires the petitioner to identify in its petition each challenged claim, the statutory grounds on which it is challenged, how it is to be construed, and the relevance of the evidence to the challenge raised. As such, the Court agreed with the PTAB that Redline’s expert declaration was more than just supplemental evidence.

In National Environmental Products Ltd. v. Dri-Steem Corporation, IPR2014-01503, Paper 11(November 4, 2014), the Board denied the petitioner’s request to file an amended petition.TheBoard noted that it’s procedures for amendment of a Petition typically are limited to correction of a clerical or typographical mistake. 37 C.F.R. § 42.104(c). Nevertheless, the Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by the applicable rules.

Failure to provide in a claim construction section a statement identifying how disputed or important claim terms are to be construed. See 37 C.F.R. § 42.104(b)(3). Claim charts should be included in the petition.