By Hannah Mehrle* and Matt Johnson

NeuMoDx Molecular, Inc., (Petitioner) who was otherwise barred from pursuing two IPR proceedings regarding patents owned by HandyLab, Inc. (Patent Owner) under 35 U.S.C. § 315(b)’s one year deadline, filed a Motion to Change the Filing Date Accorded.  The motion sought to have the PTAB change the filing date accorded to the petitions from the date that Petitioner effected service, to the date that Petitioner filed the petitions and paid the statutory fees.  The change would allow Petitioner to avoid the one year deadline of § 315(b).

Under § 315(b), a petitioner has one year from the date that the patent owner served the petitioner with a complaint alleging infringement to file a petition requesting an IPR proceeding.  The PTAB will consider a petition filed only when certain requirements are met. One requirement is that the petitioner must provide the patent owner with copies of any required documents.  35 U.S.C. § 312(a).  This requirement is reflected in 37 C.F.R § 42.105(a), which states that the petitioner must serve the petition and supporting evidence on the patent owner to effect service.  A petitioner must meet the service requirements of § 42.105(a) to get a filing date in an IPR proceeding. 37 C.F.R. § 42.106(a).

Petitioner filed the petitions and paid the statutory fees within the one-year period.  However, service was not effected until about a month after the one-year deadline because of a mistake by a third party that was hired by Petitioner.  The mistake occurred primarily because of normal office disruptions due to the COVID-19 pandemic.  The PTAB accorded the petitions a filing date of the date of service, meaning that Petitioner could not pursue the IPRs under the one-year deadline of § 315(b).  Petitioner requested that the Board exercise its discretion, and waive the statutory service requirement because leaving the filing date as is would not be in the interests of justice.  Conversely, Patent Owner argued that waiving the service requirement would deny it the ability to rely on the one-year bar date.

The PTAB granted Petitioner’s Motion to Change the Filing Date Accorded stating that Petitioner’s failure to effect service was primarily attributable to COVID-19 disruptions to normal office procedures.  The PTAB stated that the purpose of requiring service within a year is to provide the patent owner with notice of the proceeding, or otherwise to give the patent owner the relief of knowing that there will be no proceeding.  Here, Patent Owner had notice of the filings, not from Petitioner, but from checking the PTAB database.  The PTAB stated that because Patent Owner had notice of the proceedings, it would not be greatly prejudiced if the IPRs proceeded.  However, the PTAB articulated that this decision in no way adds a requirement for patent owners to search for petitions in the future.  The PTAB noted that this was a factual decision based on unusual circumstances caused by COVID-19, and that any similar future service miscues by a petitioner may not be excused.

Takeaway.  The PTAB exercised its discretion in waiving 35 USC §315(b)’s one-year requirement.  However, this was a fact specific decision made because of disruptions caused by COVID-19, and the Board may not issue similar rulings in the future.

NeuMoDx Molecular, Inc. v. HandyLab, Inc., No. IPR2020-01137-18 (P.T.A.B. Nov. 16, 2020).

* Hannah recently joined Jones Day’s New Lawyer Group

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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.