[co-author: Tova Werblowsky]*

The PTAB recently granted institution of inter partes review despite the Patent Owner not receiving the petition for the proceeding until three business days after the statutory deadline. See Kahoot! ASA and Kahoot Edu, Inc., v. Aviel D. Rubin, IPR2023-00693, September 8, 2023. The deadline for requesting IPR is one year after the Petitioner or real party in interest is served with the complaint alleging infringement of the patent, and the Petition must include “copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.” 35 U.S.C. § 312(a)(5), 35 U.S.C. § 315(b). The USPTO rule states additionally that “service may be by Priority Mail Express or by means at least as fast and reliable as Priority Mail Express.” 37 C.F.R. § 42.105(b).

In the instant case, there was no dispute as to the timeline of events. The deadline for filing the petition was on March 10, 2023. The IPR Petition was filed on the due date, and the Petitioner delivered the Petition to a FedEx location for service that same day. Petitioner sent a courtesy copy of the Petition via email to an attorney who ultimately appeared as backup counsel in the matter as well. The FedEx service package was received by the Patent Owner’s counsel on March 15, 2023, five days (3 business days) after the deadline. See Prelim. Resp. 1-2, Reply 1-2, Exs. 1021, 2001, 2002.

In this opinion, the PTAB found that Petitioner’s delivery to a FedEx office before the statutory deadline met the requirements of “by means as fast and reliable as Priority Mail Express.” Further, to any extent that standard was not met, the panel found that the backup email providing an IPR case number served the notice requirement of service. Kahoot! ASA and Kahoot Edu, Inc., v. Aviel D. Rubin, 6. The PTAB stated that service email by the Petitioner is significant because it “demonstrates Petitioner’s desire to provide Patent Owner with notice as soon as possible.”

Takeaway:

Petitioners should be attentive to petition service requirements, and follow them precisely, especially in instances where a statutory deadline is in play. Petitioners should consider going above and beyond in those instances, possibly serving via overnight delivery with a receipt as well as courtesy email copies to Patent Office counsel of record and any known litigation counsel.

*Member of the New Lawyer’s Group in Jones Day’s New York Office.