By Hannah Mehrle and Matt Johnson

A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc. d/b/a Provi) service of its petition for a Covered Business Method (CBM) patent review based on specific facts of the case.  In doing so, the panel instituted a CBM review of the challenged claims.  The Petitioner deposited the petition with FedEx on September 15, 2020, and the Patent Owner (Jason Smith) received the petition on September 16, 2020.  The Petitioner also emailed a courtesy copy of the petition to the Patent Owner’s counsel on September 15, 2020.  Importantly, the PTAB’s CBM program ended on September 16, 2020, therefore the Petitioner needed to properly effect service of the petition on or before September 15, 2020.

Under 37 C.F.R. § 42.205(b), service of a petition “may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®.  Personal service is not required.”  37 C.F.R. § 42.205(b).  Additionally, under § 42.5(b), the PTAB may waive or suspend a requirement under 37 C.F.R. § 42.

The Patent Owner argued that the petition should not be accorded a filing date of September 15, 2020 because the Patent Owner did not receive the petition via FedEx until September 16, 2020, and therefore, the petition was not served on the correspondence address of record for the Patent Owner on September 15 per the PTAB’s requirements. 37 C.F.R. § 42.205(a).  Additionally, the Patent Owner argued that email service on September 15, 2020 was not sufficient because the parties did not previously agree to electronic service, and therefore, email service here did not comply with the PTAB’s requirements under 37 C.F.R. §§ 42.6(e)(1) and 42.300(a).  Patent Owner further contended that service by deposit does not apply to PTAB proceedings under 37 C.F.R. § 1.8(a)(1)(i)(A) and thus service was not properly effected on September 15, 2020 when the petition was deposited with FedEx.  On the other hand, the Petitioner, argued that FedEx is “at least as fast and reliable as Priority Mail Express®,” and sometimes even faster, and therefore satisfies the PTAB’s filing requirements under 37 C.F.R. § 42.205(b).

The PTAB panel sided with the Petitioner, finding FedEx delivery sufficiently akin to Priority Mail Express for purposes of the petition service rule and to the extent necessary, waived the regulatory timing requirements based on the particular facts of this case, and instituted a CBM review.  In so holding, the panel stated that the use of FedEx on September 15, followed by delivery on the next day, September 16, was sufficiently similar to using Priority Mail Express and therefore satisfied the petition service requirement of § 42.205(b).  The panel noted that the Patent Owner did not establish any actual prejudice or harm arising from receipt of the petition on September 16.  Moreover, the panel stated that AIA § 18 (Transitional Program for Covered Business Patents) and § 322(a) (Petitions) do not address service deadlines.

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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 nearly 400 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.