On August 4, 2017, Immersion served Samsung with a complaint alleging infringement of U.S. Patent No. 6,429,846 (the “’846 patent”) in the Eastern District of Texas. On Monday, August 6, 2018, Samsung filed a petition for IPR of the ’846 Patent. Immersion argued that the IPR cannot be instituted because the petition was untimely under § 315(b). Under that provision, “[a]n inter partes review may not be instituted if the petition . . . is filed more than 1 year after . . . the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Samsung argued that its petition was nonetheless timely because the § 315(b) deadline fell on a Saturday and 35 U.S.C. § 21(b) provides a general “grace period” for deadlines falling on weekends and holidays. Specifically, under 35 U.S.C. § 21(b), “[w]hen the day, or the last day, for taking any action . . . in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken . . . on the next succeeding secular or business day.”
The Board agreed with Samsung and rejected Immersion’s three arguments for why § 21(b) should not apply. First, Immersion argued that § 21(b) is a “general standard” that “must yield to Section 315(b)’s specific jurisdictional limitations,” which prohibit the Board from “instituting inter partes review unless th[e] timeliness precondition [of § 315(b)] is satisfied.” The Board rejected that argument because the two statutes are not in conflict. Rather, § 21(b) “is complementary to deadline-setting provisions such as those found in Section 315(b).”
Second, Immersion argued that the Federal Circuit has “refused to create exceptions to Section 315(b) that are not found in the text of that provision.” The case Immersion relied on—Click-to-Call, Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1329–32 (Fed. Cir. 2018)—rejected a “proposed exception” to § 315(b), namely that a voluntarily-dismissed complaint does not trigger the one-year time bar. The Board distinguished that case because “the argument rejected in Click-to-Call was an attempt to create a non-statutory exception to § 315(b), and § 21(b) creates a statutory grace period that applies to ‘any action’ in the PTO.”
Third, Immersion argued that “§ 21(b) should not apply in these circumstances because the Petition could have been filed electronically on Saturday, August, 4, 2018.” The Board rejected that argument because “most, if not all, filings in the PTO can now be made electronically,” and it was not willing to conclude that § 21(b) is effectively obsolete.
Practice Tip: Although the Board ultimately determined that Samsung’s petition was timely, the decision is a useful reminder that parties should always docket and keep a close eye on deadlines triggered by statute and be sure to file papers within the statutory windows. Moreover, the decision suggests that PTAB panels might apply the § 21(b) grace period broadly to “any action” in the Patent Office, so parties should consider whether the statute applies to their facts before spending part of their limited word count on arguments about timeliness.
Samsung Elecs. Co. v. Immersion Corp., IPR2018-01468, Paper 10 (PTAB Feb. 20, 2019).