Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (Sept. 18, 2017) (Paper 13)
Takeaway (1) (Informative): In order to avoid the one-year time bar, a petition must be complete before the bar date. To be complete, a petition must satisfy each of the following requirements: (1) the content of the petition complies with 37 C.F.R. § 42.104, (2) the fee to institute has been paid, see 37 C.F.R. §§ 42.15(a), 42.103(b), and (3) the petition and relevant documents have been served on the patent owner. 37 C.F.R. § 42.105(a).
Takeaway (2): Absent a showing of good cause, the Board will not allow a petitioner to obtain the benefit of the date on which the petitioner filed an incomplete petition.
Takeaway (3): Petitioners should make sure that they have sufficient funds in their Patent and Trademark Office deposit accounts at the time of filing a petition, and, if there are insufficient funds in the account at the time of filing, make a separate attempt to reinitiate payment immediately upon the addition of sufficient funds.
On March 30, 2017, Luv N’ Care, Ltd. attempted to file a petition for inter partes review of U.S. Patent No. 8,636,178 (“the ’178 Patent”), but payment was not received by the Office on that date because, at the time, there were insufficient funds in Luv N’ Care’s deposit account to cover the filing fees. While sufficient funds were added the very next day, March 31, 2017, Luv N’ Care made no attempt to reinitiate payment at that time. Luv N’ Care first reinitiated payment on April 11, 2017, at which time there were sufficient funds in the deposit account, and an April 11, 2017 filing date was granted.
A complaint alleging infringement of the ’178 Patent had been filed against Luv N’ Care in district court on March 30, 2016, and the complaint and summons were served on March 31, 2016. So, the 35 U.S.C. § 315(b) would apply to bar Luv N’ Care’s petition unless the Board were to decide to give the petition a March 30 or March 31, 2017 filing date.
The Board refused to grant a March 30 or March 31, 2017 filing date and, thus, barred the petition under the 35 U.S.C. § 315(b) one-year bar. The Board held that a petition is not accorded a filing date until the petition is complete, which includes the requirement that the filing fee be received, not merely tendered.
The Board concluded that good cause did not exist to waive the fee requirement of § 312(a)(1). The Board noted that when a deposit account has insufficient funds to cover the amount of a payment, the system properly processes the tendered payment by not accepting the payment. The Board also noted that Luv N’ Care did not explain the delay in submitting payment and failed to respond to the Board’s June 22, 2017 Show Cause Order that gave Luv N’ Care an opportunity to provide additional evidence in support of its position.