By Akosua Kyereme-Tuah, Mike Lavine, and Matt Johnson

The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply with the word limit in the Revised Petition. Tesla, Inc. v. Unicorn Energy GmbH, IPR2022-00110, Paper 19, 13 (February 17, 2022).

Tesla filed an IPR petition on October 27, 2021 against Unicorn Energy challenging claims of U.S. Patent No. 10,008,869. Tesla, Inc. v. Unicorn Energy GmbH, IPR2022-00110, Paper 19, 2 (February 17, 2022). The accompanying Certificate of Compliance with Word Count stated that the Petition included 14,732 words. Id. On November 9, 2021, Petitioner wrote the PTAB asking for authorization to file an unopposed motion to withdraw the Petition, stating that Tesla did not intend to refile.  The PTAB responded stating, “Counsel: This case has not yet been paneled.  Please check back with us in a couple of weeks.  Thank you.”  Id., 4.  Petitioner did not follow up on that email with any further requests.

Because the 14,732 word Petition exceeds the PTAB’s 14,000 word limit, on November 26, 2021 the PTAB ordered Tesla to file a Revised Petition compliant with the limit by December 3, 2021. Tesla’s did so, and its certification for its timely-filed Revised Petition stated 13,561 words. Id. at 2, 9.

Unicorn Energy then filed a Motion to Dismiss the Revised Petition and terminate the IPR proceeding, arguing that (1) termination under 35 U.S.C. § 317 (which governs joint requests to terminate) is warranted because Petitioner’s November 9, 2021 email to the PTAB requesting authorization to file a motion to withdraw the Original Petition and terminate the proceeding was a joint request to terminate that should have been granted, (2) the Revised Petition is time-barred because the Original Petition was withdrawn by the Petitioner’s November 9 email, (3) the Revised Petition is also timed-barred because it included substantive changes requiring a change in filing date, and (4) the Revised Petition should be rejected because its word count certification underrepresented the actual word count by over 500 words due to formatting tricks (e.g., excessive text in graphics and non-standard abbreviations).  Id. at 2-3, 5-6, 9, 13 n.9.

The PTAB disagreed with Unicorn Energy, finding that the § 317 argument failed because the request in Petitioner’s November 9 email was (1) a request for filing authorization, not a request to terminate, and (2) only from Petitioner and not a joint request. Id. at 3-4. Furthermore, Unicorn Energy’s time-bar arguments were rejected because the November 9 email was not a withdrawal request and the PTAB had not granted the Petitioner’s request for authorization to file one. Id. at 5-6.  Regarding the word count issues, the PTAB found that if the Revised Petition exceeded the word limit, the excess word count was small and did not significantly expand the arguments. Id. at 13. The PTAB also noted that under the regulations, “[a] party may rely on the word count of the word-processing system used to prepare the paper,” (id. at 9), and the excess word count here was not serious enough to warrant dismissing the Revised Petition and terminating the proceeding. Id. at 13.  The PTAB also found that the original filing date can be accorded because the PTAB’s Order to file a Revised Petition was proper under the regulations and the Revised Petition was timely. Id at 8.

Takeaway: The PTAB will likely decline motions to dismiss an IPR petition based on a word count that does not significantly exceed the 14,000 limit. Parties may rely on their word-processing systems to ensure compliance with word limits.

The following two tabs change content below.
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.

Latest posts by Matthew Johnson (see all)