On February 20, 2019, the PTAB held that the statutory grace period for PTO papers and fees due on a weekend or federal holiday applies to the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b). Under longstanding PTO practice, the Office has accepted filings after a formal deadline if that deadline fell on a weekend or federal holiday and the filing is completed on the next business day. 35 U.S.C. § 21(b); 37 C.F.R. § 1.7. The PTAB’s decision in Samsung Electronics Co. v. Immersion Corp., IPR2018-01468, Paper 10 at 13-19 (PTAB Feb. 20, 2019), indicates that the Office will extend that practice to IPR filings.

Section 315(b) imposes a time bar against IPR petitions filed more than one year after the petitioner (or the petitioner’s privy or real party in interest) is served with a complaint alleging infringement of the challenged patent. In Samsung Electronics v. Immersion Corp., the PTAB considered a petition filed after a one-year deadline that fell on a weekend. Specifically, the complaint had been served on August 4, 2017. One year later, the presumptive petition deadline of August 4, 2018, was a Saturday, and the petition was not filed until the next business day—Monday, August 6, 2018.

The parties disputed the petition’s timeliness under § 315(b). The patent owner argued that a general rule like § 21(b) should not override the IPR-specific jurisdictional limitation imposed by § 315(b) and that modern electronic filing allows IPR petitioners to meet any deadline. The petitioner responded that § 21(b) applies by its terms to “any action” in the PTO, including IPR petitions.

The Board concluded that IPR petitions fall within the broad sweep of § 21(b), which operates in a manner complementary to, rather than in conflict with, § 315(b). In addition, because most, if not all, PTO filings can be made electronically, crediting the patent owner’s arguments would have rendered § 21(b) “essentially obsolete.” The PTAB thus rejected the patent owner’s time-bar argument and instituted IPR.

Interestingly, the petitioner cited a previous PTAB decision as precedent for applying the § 21(b) grace period to IPR petitions. See Samsung Elecs. Co. v. ELM 3DS Innovations, LLC, IPR2016-00393, Paper 11 at 4-5 (PTAB June 30, 2016). In that case, however, the petition deadline fell not on a weekend or regular federal holiday, but during an extended PTO system failure that resulted in the retroactive designation of December 22-24, 2015, as federal holidays for PTO filing purposes. Thus, last week’s decision was the first time the PTAB applied § 21(b) to permit a petition filed after a foreseeable weekend or holiday deadline.

Even with this decision, it’s not time to start freely putting off weekend deadlines for IPR petitions just yet. The Federal Circuit has held that the PTAB’s time-bar decisions are reviewable despite arising in the context of an otherwise unreviewable institution decision. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1375 (Fed. Cir. 2018) (en banc). And the Federal Circuit has yet to consider the § 21(b) issue. In the prior Samsung v. ELM 3DS case, the PTAB ruled for the patent owner and upheld the challenged claims, so no party raised the time-bar issue on appeal. Samsung Elecs. Co. v. ELM 3DS Innovations, LLC, No. 2017-2474 et seq. (Fed. Cir.). At least until the PTAB’s approach has been approved by the Federal Circuit, relying on the § 21(b) grace period will still carry risk for IPR petitioners.