February 25, 2019
On February 20, in Samsung Electronics v. Immersion Corp., the Patent Trial and Appeal Board (PTAB) concluded that the one-year period for filing a petition for inter partes review (IPR) is extended to the next business day if the deadline falls on a weekend. The PTAB instituted trial on two IPR petitions despite the petitions being filed two days after the one-year statutory deadline.
Samsung had been served with a patent infringement complaint on August 4, 2017, so the one-year deadline fell on Saturday, August 4, 2018. Samsung did not file the petitions until Monday, August 6, 2018. Patent owner Immersion argued that the petitions were untimely and therefore trial could not be instituted. Under the pertinent statute, 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” Immersion argued that this requires IPR petitions to be filed no more than one year after the complaint is served, without exception. Immersion reasoned that Congress would have explicitly included any exceptions within the statute if they intended for them to apply. Moreover, they argued, with an electronic filing system there was no reason Samsung could not have filed on a Saturday.
Samsung argued that the petitions were timely filed under 35 U.S.C. § 21(b). This provision provides that when the last day for taking any action in the USPTO falls on Saturday, Sunday, or a Federal holiday, the action may be taken on the next succeeding business day. Samsung argued that this provision unambiguously establishes that deadlines “for taking any action” within the USPTO are extended to the next business day.
The PTAB agreed with Samsung, finding no reason that the provisions of § 21(b) should not apply to the deadline for filing an IPR petition. The PTAB reasoned that since most filings in the USPTO can be made electronically, adopting Immersion’s reasoning would render § 21(b) obsolete. Accordingly, the PTAB concluded the petitions were timely filed.
This decision, while not legally precedential, is pertinent to all PTAB practitioners and parties that may be involved in an IPR proceeding. However, the Federal Circuit has yet to decide the issue and there is still some risk involved with filing an IPR petition after the one-year deadline. Until approved by the Federal Circuit, relying on the weekend and holiday exception when filing an IPR petition should generally be avoided when possible.
For more information on this ruling, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.
Fitch Even law clerk Zachary Van Engen contributed to this alert.
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