Beware: PTAB Mercilessly Enforces Deadlines

The Patent Trial and Appeal Board (PTAB) recently denied motions by Teva to amend the filing dates of two petitions to institute IPRs related to patents covering Suboxone, a drug used to help patients suffering from opioid addiction.  Teva’s deadline for filing these petitions was December 3, 2016, but due to technical difficulties in filing, confirmation of filing was not recorded until a few minutes after midnight on December 4.  The PTAB accorded Teva a December 4 filing date.  The PTAB then strictly enforced its filing deadlines, refusing to exercise its discretion to waive the strict deadline.

Under the America Invents Act, a request for inter partes review must be filed within one year from the date in which the petitioner is served with a complaint alleging infringement.  Teva was served with a complaint for patent infringement on December 3, 2014, resulting in a December 3, 2015 deadline for IPR petitions.  On December 3, 2015, at 9:45 pm, Teva’s counsel began uploading its IPR petitions to the PTAB’s online filing system.  Teva’s counsel encountered multiple errors when attempting to upload the files and make payments, which required repeated forced shutdowns and log-ins.  As a result of these difficulties, confirmation of filing for the two IPR petitions was not actually received until 12:01 and 12:09 a.m. on December 4.

Teva reasonably requested that the PTAB exercise its discretion and change the filing dates accorded to its petitions from December 4, 2016, to December 3, 2016, citing 37 C.F.R. § 42.5(b) (“The Board may waive or suspend” electronic filing requirements).  The PTAB showed little sympathy for this request, blaming the situation on a last minute filing, rather than on problems with the e-filing system.  The PTAB also rejected Teva’s explanation for the delays, deciding that the delay resulted from user-generated errors.

The Takeaway:  ANDA filers should plan to file IPR petitions well in advance of the deadline.  To the extent the filing will occur on the day of the deadline, practitioners would be well-advised to file the petition during business hours so that they can contact the PTAB should any technical issues arise.