PTAB Strategies and Insights - October 2020: Petitioner Beware - No Cure For Missed Filing Requirements

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

Petitioners beware – the Board holds you to what is submitted on filing day for required documents. In Shenzhen Aurora Technology Company, Ltd. v. Putco, Inc., IPR2020-00670, “[t]he Petition relies on foreign language references in support of its asserted grounds of unpatentability, but fails to provide affidavits attesting to the accuracy of the submitted translations of these references.” Paper 10, 5. But “[w]hen a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document.” Id., citing to 37 C.F.R. §§ 42.63(b), 42.1, 1.68. Here, Petitioner failed to provide this required affidavit or declaration after relying on machine translations of Japanese and Taiwanese documents.
 
After evaluating this issue, along with a noticeable incompleteness of the documents, the Board held that “[a]s the [foreign language documents are] relied upon for all asserted grounds of unpatentability…and Petitioner failed to comply with the Board’s rule requiring an affidavit attesting to the accuracy of a translation, the Petition has not established a reasonable likelihood of prevailing as to at least one challenged claim. We deny the Petition and do not institute inter partes review because Petitioner has not filed affidavits attesting to the accuracy of foreign language references relied upon to show unpatentability.” Paper 10, 6.
 
Both parties should be aware of all USPTO Rules relating to prior art, and must comply with those rules on the date of filing of a Petition. The Board has time and again held that these type of missteps in the Petition filing are not curable before or after trial. So measure twice and cut once.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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