By Levent Herguner, Derek Walker,* and Matt Johnson

On May 10, 2023, a PTAB Panel excused the late filings of the Patent Owner and allowed over thirty exhibits and a Corrected Patent Owner Response (“CPOR”) to be submitted into the record in Samsung Electronics Co., Ltd. v. Communication Technologies, Inc., IPR2022-01221.  This decision is noteworthy considering that, as we previously discussed on this blog, the PTAB has stricken exhibits from the record due to late filings before.

The present dispute arose from the Scheduling Order’s requirement for a Patent Owner Response (“POR”) to be submitted by March 23, 2023.  After the IPR was instituted, both parties stipulated to adjust the due date to April 7, 2023.  Patent Owner filed a POR and one exhibit on that date accordingly.  Five days later, Patent Owner submitted an unauthorized CPOR and thirty-three additional exhibits.  While many of these exhibits were referenced in previous filings, two of them (exhibits 2062 and 2064) were entirely new to the record.

Patent Owner presented several arguments against expunging the thirty-three exhibits, arguing that the CPOR filing fixed “sufficient informalities” and made no changes “to alter the substance of the originally filed Patent Owner Response.”  Additionally, Patent Owner stated that all but two exhibits were already available to the Petitioner through other submitted documents, while the remaining two were important for supporting its arguments.  Patent Owner also argued that the Petitioner would be obligated to disclose many of the previously known exhibits according to 37 C.F.R. § 42.51(b)(1)(iii), which requires parties to provide relevant information inconsistent with their position.  Patent Owner noted that Petitioner was informed of these changes via email and did not raise any objections.

Petitioner refuted these arguments, noting first Patent Owner did not provide Samsung a copy of its late filings prior to their submission and that Petitioner had, in its response, reserved its right to object.  Second, Petitioner noted it would be “unfair and prejudicial to require Samsung to use its discovery/reply period to develop [Patent Owner’s] evidence.”

In its order, the Panel rejected Patent Owner’s argument for that it had cause to file the corrected brief.  After examining the record, the Panel found that Patent Owner knew its POR was incomplete and then filed exhibits and a CPOR with substantive changes on at least nine pages without seeking authorization. The Panel concluded that “Patent Owner’s argument that it was not clear [] if the late filing of the CPOR and exhibits was authorized or did not require a motion is disingenuous at best.”

Nevertheless, the Panel excused Patent Owner’s late and unauthorized filing of the CPOR and accompanying exhibits.  The Panel referred to 37 C.F.R. § 42.5(b)(3), which allows for the excusal of a late action if it is deemed in the interests of justice by the PTAB.  The Panel further emphasized the USPTO Rules of Professional Conduct, which require attorneys to provide competent and diligent representation to their clients.  Considering these factors, the Panel found that Patent Owner had a reasonable expectation that its counsel would comply with the rules.  The Panel concluded that it was “in the interests of justice” to adjudicate the case on the merits and refused “to punish Patent Owner for the loose practices of counsel.”

Takeaway: The Panel’s decision marks a variance from previous PTAB decisions, accepting a late and unauthorized filing of a CPOR and over thirty exhibits in the “interests of justice.”  The Order underscores the importance of following scheduling deadlines while also demonstrating PTAB’s flexibility in ensuring cases are adjudicated on their merits.  Parties should not perceive this decision as a license to make tardy submissions.  This decision underscores the importance of competent representation and diligent adherence to procedural rules.

* Derek is a Summer Associate in Jones Day’s Washington Office.

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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.