Erroneous PGR Service Deemed Excusable by Split Panel

by | May 10, 2023 | PGR, Trial Institution

By Carl Kukkonen –

In DynaEnergetics Europe GmbH et al v. QinetiQ Limited (PGR2023-00003), the petitioner filed its petition on the last possible day in the 9-month statutory period to timely file a petition for post-grant review (PGR).  The certificate of service for the PGR petition was sent to an incorrect law firm that had never represented patent owner nor was the petition timely served on the patent owner’s counsel of record.  This error was discovered by the petitioner several days after the expiration of the 9-month statutory period and the patent owner’s counsel of record was served shortly thereafter. The patent owner filed a motion to dismiss due to defective service and a split panel opted to exercise their discretion and deny the motion.

The patent owner argued that, by virtue of using an incorrect address on a certificate of service, the petition was “incomplete” as of its time of filing and that the alleged “deficiency in the petition” was not timely corrected in accordance with 37 C.F.R. § 42.206.  As argued by the patent owner, a petition is not “complete” unless and until service of the petition is effected on the correspondence address of record.  Thus, the patent owner interpreted Section 42.206(a)(2) to mean that a filing date is not accorded to a petition until service is effected at the correspondence address of record of the patent owner.  As stated in the opinion, the panel summed up the patent owner’s position as subsection (a)(2) operates as a condition precedent that must be satisfied on or before expiration of the statutory filing deadline of 35 U.S.C. § 321(c) to be accorded a filing date.

In its opposition, petitioner argued that the date of service does not affect the filing date and that applicable provisions of the governing statutes are silent on the issue of whether service of a petition must be effected within the 9 month period for filing the petition under Section 321(c).  petitioner, also argued that in the event its Petition is deemed “incomplete” by virtue of the incorrect service, such incompleteness is a matter of rule, not statute, and the Board should exercise its power to waive rule violations under 37 C.F.R. § 42.5.

The panel of Administrative Patent Judges, could not come to an agreement and issued three separate opinions with a majority opting to deny the dismissal motion and allow trial to proceed.

In a first concurring opinion, a first judge took the position that the patent owner’s motion to dismiss should be denied as petitioner’s improper service could be corrected. “In my view, a mere regulatory defect, such as occurred here with the certificate of service, may be corrected as a matter of course either by the party on its own or following notice by the Office without resort to excusing late action pursuant to 37 C.F.R. § 42.5(c)(3). Under this view, correcting a mere regulatory defect does not and should not depend on the exercise of discretion by the panel of judges assigned to the case. Rather, it is a routine matter of Office administration. Consequently, and consistent with representations the Office has made to the public, the petition here should be deemed ‘complete’ as of October 4, and the provisions of 37 C.F.R. § 42.206(b) do not come into play.” (page 12).

In a second concurring opinion, a second judge took the position that the patent owner’s motion to dismiss should be denied as petitioner cured its error in service albeit under a different regulation than the first concurring opinion. “In particular, § 42.206(a)(2) requires service effected ‘on the correspondence address of record,’ which Petitioner did not do because it sent the copy to the wrong address. Thus, contrary to my colleague’s concurrence, it is my view that Petitioner’s Petition has a regulatory defect that must be cured in view of the language in § 42.206(b). Contrary to the dissent, however, I believe this defect is one for which we could, and should, allow correction.” (page 16).

Lastly, in a dissenting opinion, a third judge took the position that the patent owner’s motion to dismiss should be granted because petitioner’s improper service was not merely regulatory matter, it was a statutory one. “Not only does the majority disregard the Office’s interpretation that timely service is a statutory requirement, it also fails to acknowledge that the Office, in enforcing it, expressly warned Petitioner that, upon submission of a new certificate of service showing correction of the error in the originally filed certificate, the PGR petition would receive a new filing date of October 12, 2022, effectively placing the PGR petition outside the statutory window for post-grant review. Thus, in keeping with the Office’s interpretation of the statute and its warning to Petitioner, I would find that Petitioner failed to comply with the statutory service requirement before expiration of the 9-month statutory filing deadline for post-grant review of the ‘039 patent. As such, I would dismiss the PGR petition as time-barred.” (page 21).

 

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Carl Kukkonen

Partner at Jones Day
An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.