Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 19
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILA SPECIALTIES INC. and
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00144
`Patent 8,058,238 B2
`____________
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`ORDER
`Granting Motion to Correct Accorded Filing Date
`37 C.F.R. §§ 42.5(b) and 42.6(b)(2)(i)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper No. 19
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILA SPECIALTIES INC. and
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00144
`Patent 8,058,238 B2
`____________
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`ORDER
`Granting Motion to Correct Accorded Filing Date
`37 C.F.R. §§ 42.5(b) and 42.6(b)(2)(i)
`
`
`
`
`
`
`
`
`IPR2015-00144
`Patent 8,058,238 B2
`
`
`I. BACKGROUND
`On October 23, 2014, at 11:26 p.m. (Eastern Time), Petitioner began
`the process of filing a petition requesting inter partes review of U.S. Patent
`No. 8,058,238 (the ’238 patent). Mot. 7; Ex. 1043 ¶ 7 (Declaration of
`Adriana Serrano). During the course of the submission process, Petitioner
`asserts that it encountered technical problems with the Board’s Patent
`Review Processing System (PRPS). Mot. 7; Ex. 1043 ¶¶ 4, 8–9. In
`particular, Petitioner asserts that on at least one occasion PRPS became
`unresponsive, requiring Petitioner to close the browser window and re-log
`into PRPS. Mot. 7; Ex. 1043 ¶ 8.
`Although a complete electronic petition was not submitted on October
`23, 2014, Petitioner asserts that prior to 12:00 a.m. on October 24, 2014, it
`was able to file the petition, information for lead and back-up counsel,
`information related to the real parties in interest, and powers of attorney.
`Mot. 7; Ex. 1043 ¶¶ 7–8. Petitioner further asserts that prior to 11:59 p.m.
`October 23, 2014, it submitted the filing fee of $42,400, “hit the ‘pay’
`button,” and “hit the ‘submit’ button,” but later received notification from
`PRPS that the filing date accorded to the petition was October 24, 2014.
`Mot. 7; Ex. 1043 ¶ 9.
`Petitioner then sought to file the petition and exhibits with the Board
`by Priority Mail Express. Mot. 3; Ex. 1043 ¶ 10. To this end, Petitioner had
`the documents printed, delivered to the San Francisco International Airport
`Post Office, and stamped with a filing date of October 23, 2014.1 Mot. 3;
`
`
`1 Pursuant to 37 C.F.R. § 1.10(a), any correspondence received by the
`USPTO that was submitted using Priority Mail Express “will be considered
`filed with the USPTO on the date of deposit with the USPS.”
`
`
`
`2
`
`
`
`IPR2015-00144
`Patent 8,058,238 B2
`
`Ex. 1043 ¶¶ 11–12; Ex. 1039 (reflecting an October 23, 2014 mailing date
`and an 11:50 p.m. sales receipt). With the paper filings, Petitioner included
`a motion requesting that the Board accept paper filing of the petition and
`exhibits. Ex. 2002; Ex. 1043 ¶ 11. Petitioner did not serve this motion on
`Patent Owner. Reply 1–2.
`On November 13, 2014, the Board accorded the petition a filing date
`of October 24, 2014. Paper 6. On December 1, 2014, Petitioner filed a
`Motion to Correct Accorded Filing Date (Paper 11, “Mot.”), on December 8,
`2014, Patent Owner filed an Opposition to the motion (Paper 13, “Opp.”),
`and on December 18, 2014, Petitioner filed a Reply (Paper 16, “Reply”).
`II. APPLICABLE RULES AND GUIDANCE
`
`Under the Board’s Trial Practice and Procedure rules, “[u]nless
`otherwise authorized, submissions are to be made to the Board electronically
`via the Internet according to the parameters established by the Board and
`published on the Web site of the Office.” 37 C.F.R. § 42.6(b)(1). Guidance
`on the Web site of the Office instructs that paper filing is available only
`when both PRPS and the Board’s email address are unavailable:
`Paper filing via Priority Mail Express® (formerly known as
`EXPRESS MAIL®), or by means at least as fast and reliable as
`Priority Mail Express, is authorized only if both PRPS and the
`Board’s email address (Trials@uspto.gov) are unavailable.
`See http://www.uspto.gov/ip/boards/bpai/prps.jsp at A2.
`
`To the extent paper filing is authorized, 37 C.F.R. § 42.6(b)(2) sets
`out the requirements for such a filing:
`(2)(i) Filing by means other than electronic filing. A document
`filed by means other than electronic filing must:
`
`(A) Be accompanied by a motion requesting acceptance
`
`of the submission; and
`
`
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`3
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`IPR2015-00144
`Patent 8,058,238 B2
`
`
`(B) Identify a date of transmission where a party seeks a
`
`filing date other than the date of receipt at the Board.
`
`(ii) Mailed correspondence shall be sent to: Mail Stop PATENT
`BOARD, Patent Trial and Appeal Board, United States Patent
`and Trademark Office, PO Box 1450, Alexandria, Virginia
`22313-1450.
`Pursuant to 37 C.F.R. § 42.6(e), “[e]ach document filed with the
`
`Board, if not previously served, must be served simultaneously on each
`opposing party.”
`
`III. ANALYSIS
`
`Petitioner does not contend that both PRPS and the Board’s email
`address were unavailable on October 23, 2014. Nor does Petitioner contend
`that it properly served the motion to accept paper filing on Patent Owner.
`See Reply 1–2. Petitioner asserts, instead, that these requirements should be
`waived by the Board because Petitioner, at all times, used reasonable
`diligence and good faith in attempting to submit the petition, both
`electronically and via paper filing. Mot. 8.
`
`Patent Owner contends that the Board does not have the authority to
`waive the service requirement for the motion requesting acceptance of the
`paper filing and, even if it could, the facts of this case do not support
`waiving the service requirement or the Board’s guidance relating to paper
`filings. Opp. 1–3, 6. We address these arguments in turn.
`
`1. Board Authority to Waive the Service Requirement
`
`
`Pursuant to 37 C.F.R. § 42.5(b), “[t]he Board may waive or suspend a
`requirement of parts 1, 41, and 42 and may place conditions on the waiver or
`suspension.” Despite the apparent broad authority to waive requirements
`found in part 42, including the paper filing requirements of 37 C.F.R.
`§ 42.6(b)(2), Patent Owner asserts that Petitioner’s failure to serve the
`
`
`
`4
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`
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`IPR2015-00144
`Patent 8,058,238 B2
`
`motion to accept paper filing pursuant to 37 C.F.R. § 42.6 cannot be waived
`in this case because it is a statutory requirement. Opp. 2. Patent Owner’s
`argument is set forth below:
`Pursuant to 35 U.S.C. § 312(a), “[a] petition filed under section
`311 may be considered only if,” inter alia, “the petitioner
`provides copies of any of the documents required under
`paragraphs (2), (3), and (4) to the patent owner . . . .” 35 U.S.C.
`§ 312(a)(5). These statutorily required “documents” include
`“such other information as the Director may require by
`regulation.”
` 35 U.S.C. § 312(a)(4).
` The regulations,
`incorporated by reference in the statute, require that “[a]
`document filed by means other than electronic filing must . . .
`[b]e accompanied by a motion requesting acceptance of the
`submission.” 37 C.F.R. § 42.6(b)(2)(i), (i)(A); 37 C.F.R. §
`42.104 (stating that petition must comply with 37 C.F.R. §
`42.6). Thus, 35 U.S.C. § 312(a)(5) requires that a petitioner
`serve on the patent owner any motion requesting acceptance of
`a paper petition.
`Opp. 2.
`
`The thrust of Patent Owner’s argument is that, because regulations
`regarding the type of information required for a complete petition are
`referenced in the statute, ancillary regulations related to the form and
`method of filing documents must also have the force of statute. Id. at 2–3
`(“Thus, the Board is prohibited by statute from instituting inter partes
`review based on . . . Agila’s paper petition, which did not meet the statutory
`service requirements.”). We do not agree.
`
`Section 312(a)(5) requires that a petitioner provide copies of any of
`the documents required under paragraph (4). Paragraph (4) states that a
`petition may be considered only if “the petition provides such other
`information as the Director may require by regulation.” 35 U.S.C.
`§ 312(a)(4) (emphasis added). The question, then, is whether the motion to
`
`
`
`5
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`IPR2015-00144
`Patent 8,058,238 B2
`
`accept paper filing constitutes information that the petition must provide.
`We determine that it does not. As noted by Petitioner, pursuant to
`§ 42.6(b)(2)(i)(A), “[a] document filed by means other than electronic filing
`must . . . [b]e accompanied by a motion requesting acceptance of the
`submission.” Reply 1. Thus, the motion to accept paper filing accompanies
`the petition and is not part of the petition in question. Accordingly, the
`motion is not a “document” or “information” that is required for a complete
`petition under 35 U.S.C. §§ 312(a)(4) and (a)(5).
`
`Based on the foregoing, we conclude that the Board has discretion to
`waive the service requirement set forth in 37 C.F.R. § 42.6(e) for a motion to
`accept paper filing of a petition. We now turn to whether the circumstances
`of this case justify waiving the Board rules.
`2. The Circumstances of This Case Counsel in Favor of a Waiver
`
`
`Paper filing of documents with the Board is not preferred. Indeed,
`guidance on the Web site of the Office permits such submissions only under
`very limited conditions. See http://www.uspto.gov/ip/boards/bpai/prps.jsp,
`at A2. Although it is a very close call, under the specific circumstances of
`this case, we determine that good cause exists to accept the paper filing of
`the petition. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure
`the just, speedy, and inexpensive resolution of every proceeding.”).
`
`Petitioner’s declarations and representations indicate that: (1) the
`petition and exhibits were ready for timely electronic filing on October 23,
`2014; (2) the exhibits and declaration testimony relied upon in IPR2015-
`00144 are identical to those timely filed electronically in IPR2015-00141,
`IPR2015-00142, and IPR2015-00143 on October 23, 2014; and (3) the
`petition and filing fee (as opposed to the vast majority of exhibits in
`
`
`
`6
`
`
`
`IPR2015-00144
`Patent 8,058,238 B2
`
`IPR2015-00144) were timely filed electronically on October 23, 2014. Ex.
`1043 ¶ 8; Mot. 1. Although these scattered filings are insufficient to
`establish an electronic filing date for IPR2015-00144 on October 23, 2014,
`we conclude that they do counsel in favor of applying our discretion to
`accept the October 23, 2014 paper filing in this case.2
`
`Undoubtedly, Petitioner’s failure to timely file an electronic petition
`arose because it waited until the 11th hour to begin submitting its petition.
`Nevertheless, Petitioner presents evidence that technical problems arose
`during its filing and that it submitted the paper filing in a good faith effort to
`ensure timely filing of the petition, as opposed to an attempt to gain three
`extra hours in which to complete the petition, declaration testimony, or
`exhibits. As such, under the specific facts of this case, we exercise our
`discretion under 37 C.F.R. §§ 42.5(b) and 42.6(b)(2) to accept paper
`submission of the petition and associated exhibits.
`
`Petitioner’s paper submission was stamped by the USPS with a
`mailing date of October 23, 2014; therefore, we grant Petitioner’s motion to
`accord IPR2015-00144 a filing date of October 23, 2014. See 37 C.F.R. §
`1.10(a).
`3. Additional Thoughts
`
`
`Paper filing with the Board creates significant administrative burdens.
`We caution Petitioner that it should not presume that paper filing will be
`
`
`2 With respect to service of the motion, although Petitioner never served the
`motion to accept paper filing on Patent Owner, through the Board’s
`authorization to file the motion to accord a new filing date, Patent Owner
`has had full opportunity to address the substantive question of whether paper
`filing should be accepted in this case.
`
`
`
`7
`
`
`
`IPR2015-00144
`Patent 8,058,238 B2
`
`accepted in the future, even under circumstances similar to those discussed
`above.
`
`IV. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that Petitioner’s Motion to Correct Accorded Filing Date
`is granted; and
`
`FURTHER ORDERED that IPR2015-00144 be accorded a filing date
`of October 23, 2014.
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`IPR2015-00144
`Patent 8,058,238 B2
`
`PETITIONER:
`Peter Munson
`pmunson@wsgr.com
`Lorelei Westin
`lwestin@wsgr.com
`
`PATENT OWNER:
`Emily R. Whelan
`Emily.Whelan@wilmerhale.com
`
`Jane M. Love
`Jane.Love@wilmerhale.com
`
`Andrej Barbic
`Andrej.Barbic@wilmerhale.com
`
`William DeVaul
`William.DeVaul@cubist.com
`
`He H. Gu
`Henry.Gu@cubist.com
`
`
`
`
`
`
`
`
`
`9
`
`
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