By: Matt Johnson

The PTAB rules state that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.”  37 C.F.R. § 42.105(a).  Prompt service is important in IPRs because the Preliminary Response to a Petition is due only three months from the date of the Petition’s filing.  The correspondence address for a patent can be adjusted via filing of a simple form.  Failure to keep USPTO records up to date could result in late notification that a patent is being challenged and loss of preliminary-response preparation time.

HTC Corp. v. J.A. Salazar, IPR2018-00273, challenges claims of U.S. Patent No. 5,802,467.  J.A. Salazar is an inventor listed on the ’467 patent, issued in 1998, to Innovative Intelcom Industries.  As part of a disposition of assets of III in 2006, Salazar acquired the patent and has held it in his own name since.  But he never updated the USPTO correspondence address, which remained at a stale address for Innovative Intelcom Industries’s prior counsel.  Shortly after the patent expired, Salazar asserted it against HTC.

On December 4, 2017, HTC filed a petition challenging claims of the ’467 at the PTAB.  HTC served the petition on counsel of record indicated by the correspondence address on the USPTO’s PAIR system.  When that package was returned, HTC tried a more current address for the firm listed in PAIR.  This second communication also did not reach Mr. Salazar, who is now represented by a different firm.  Mr. Salazar represents that he became aware of the PTAB challenge on February 13, 2018, when the Board reached out to Mr. Salazar’s litigation counsel to inform them that the required Patent Owner Mandatory Notices had not yet been filed.

Mr. Salazar contacted the Board and stated that there was good cause to reset the Preliminary Response due date to May 13th, 3 months from the date he was actually made aware of the PTAB Petition (and two months beyond the default Preliminary Response due date).  HTC argued that no adjustment of the due date should be given because it was Patent Owner’s failure to update his correspondence that resulted in the delayed notice.

Two of the three judges on the panel (McNeill and Margolies) decided to split the difference and granted Mr. Salazar a one-month extension, largely based on the limited harm that the delay would have on the petitioner.  But of note, Judge Lee filed a dissent stating that no extension should be granted.  That dissent stated that Patent Owner’s failure to update the correspondence address resulted in the PTAB expending significant resources to find and notify Mr. Salazar of the pending Petition.  Because the delay in service was Patent Owner’s fault, Judge Lee felt that no extension should be granted.

This decision highlights that, while the PTAB may be gracious enough to grant extensions in similar cases in the future, that is by no means a guarantee.  Such extensions are discretionary upon a finding of good cause, and future panels may not be so generous.  Patent Owners are counseled to maintain USPTO counsel and correspondence addresses of record, especially for patents that are involved in litigation and are ripe for PTAB challenge.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.