In E*Trade Financial Corporation, et al. v. Droplets, Inc., the PTAB granted a motion to change the filing date of an IPR petition, according a filing date based on the initial submission of the petition via e-mail when the Board’s e-filing system (known as PRPS) was unavailable. IPR2015-00470, Paper 17 (Apr. 20, 2015).
Unless otherwise authorized, an IPR petition must be filed via PRPS. See 37 C.F.R. § 42.6(b)(1). When, however, PRPS is unavailable or down, a petition may be filed via e-mail at Trials@uspto.gov, the Board’s Trials mailbox. See http://www.uspto.gov/ip/boards/bpai/prps.jsp. The petition must be accompanied by a motion requesting acceptance of the submission by means other than e-filing. 37 C.F.R. § 42.6(b)(2).
In the E*Trade matter, the Petitioner attempted to file its Petition via PRPS on December 17, 2014, but the system was unavailable. A notice posted on the Board’s website instructed the Petitioner to e-mail the Board regarding the need to file a petition, but without any attachment.
When the Petitioner sought clarification, the Board instructed it to submit the Petition via e-mail attachment to Trials@uspto.gov, but without any accompanying motion for acceptance of the submission. The Petitioner complied with those instructions, and the same day, served a copy of the Petition filings on the Patent Owner.
In response, the Board sent an e-mail the next day instructing the Petitioner to file the Petition, along with a motion to change the filing date, via PRPS when it became available. On December 19, the Petitioner followed those instructions, requesting a filing date of December 17. A few days later, however, the Board mailed a Notice of Filing Date according a filing date of December 19.
In support of its Motion to change the filing date, the Petitioner attached its December 17 e-mail to the Board’s Trials mailbox, which included the PRPS website notice, and the Board’s December 18 e-mail. According to the Board, the e-mails established that on December 17, PRPS was unavailable, and that the Petitioner submitted the Petition and authorized the PTO to charge the required fees. The Motion also stated that the Patent Owner was served with the petition filings on the same day, and the Board noted that the Owner did not oppose the Motion.
Based on this evidence, the Board found that the Petitioner “made a good faith effort to comply with the filing instructions” it received on December 17 and concluded that the Petitioner satisfied all the relevant statutory and regulatory filing requirements on that day. The Board accorded the Petition the filing date of December 17.
In essence, the Board waived the requirement that a motion requesting acceptance of the submission must accompany a petition filed via e-mail. It may nevertheless be prudent to submit such a motion when an e-mail submission is authorized, as here, to avoid any potential pitfalls. This decision also illustrates the importance of preserving evidence of PRPS unavailability (such as a notice or an error message on the PRPS website), correspondence with the Board regarding the same, and compliance with all filings requirements, including service on the Patent Owner.