In this informative opinion, Luv N’ Care, LTD v. McGinley, Case IPR2017-01216, Paper 13 (Sept. 18, 2017) the PTAB clarified that to be accorded a filing date, a petition must be complete, including receipt by the PTO of the petition fee for institution. As a result of a delay in payment of this fee, Luv N’ Care’s IPR petition was accorded a filing date ten days later than the date on which it filed the petition, and was ultimately barred by the one-year filing bar under 35 U.S.C. § 315(b).
McGinley served Luv N’ Care with a complaint alleging infringement of U.S. Patent No. 8,636,178 on March 31, 2016. On March 30, 2017, one day before the one-year bar, Luv N’ Care filed a petition for inter partes review of the ’178 patent. Luv N’ Care sought to pay the petition fee via its deposit account. But the account lacked sufficient monies. The PTO therefore did not receive payment of the fees with the petition filing. Sufficient funds were added to the deposit account the next day, March 31, 2017. But Luv N’ Care did not reinitiate payment until April 11, 2017. As a result, the PTAB accorded the petition a filing date of April 11, 2017. But if that is the filing date of the petition, then the petition is barred under 35 U.S.C. § 315(b).
An IPR petition is considered complete once:
(1) a petition is filed with the content of the petition complying with 37 C.F.R. § 42.104;
(2) payment of the fee to institute has been received by the PTO (37 C.F.R. §§42.15(a) and 42.103(b)); and
(3) the petition and relevant documents have been served on the patent owner (37 C.F.R. § 42.105(a)).
In reaching its decision, the PTAB noted that these rules merely follow the statutory requirement and establish that the full payment must be received, not merely tendered, in order to be considered as “accompanying” the petition.
A petition filed under section 311 may be considered only if – (1) the petition is accompanied by payment of the fee established by the Director under section 311.
35 U.S.C. § 312(a)(1).
No filing date will be accorded to the petition until full payment is received.
37 C.F.R. § 42.103(b) (emphasis added).
The PTAB further denied Luv N’ Care’s motion to assign an earlier filing date, concluding that Luv N’ Care failed to provide evidence supporting its assertion that payment was not received due to a PTAB E2E payment system error. Luv N’ Care argued it sufficiently funded the deposit account on March 31, and that it tendered full payment the day before. The PTAB found that such arguments were not, however, supported by the evidence of record, which established that Luv N’ Care received a notice on March 30, 2017, that its payment had not cleared, Luv N’ Care did not sufficiently fund the deposit account until March 31, and Luv N’ Care made no attempt to reinstate payment until April 11. Further, Luv N’ Care failed to explain why it waited ten days to reinstate payment, and failed to respond to the PTAB Show Cause Order of June 22, 2017.
This case serves as a reminder of the requirements for completion of an IPR petition, including the requirement of payment and receipt by the PTO of the petition fee. 35 U.S.C. § 312(a)(1). As we have discussed (here), the PTAB strictly applies these requirements.