United States: PTAB Denies Motion To Excuse Late Filing Of Exhibits To IPR Petition

The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s motion to excuse the late filing of the exhibits to its petition for inter partes review (IPR). The PTAB found that the petitioner had failed to show good cause to excuse this clerical error, especially in light of the notice of the deficient filing provided by the PTAB. The PTAB also found that excusing the late filing was not in the interests of justice.

Petitioner Nuna Baby Essentials, Inc. filed a petition for IPR on September 10, 2018. Because of an apparent clerical error, no exhibits were filed with the petition, although they were served with the petition on patent owner Britax Child Safety, Inc. In a Notice of Filing Date (the “Notice”) entered on September 21, the PTAB informed Nuna that “[n]o exhibits [had] been filed.” The Notice stated, “Petitioner must correct the defect(s) within FIVE BUSINESS DAYS from this notice. Failure to correct the defect(s) may result in an order to show cause as to why the Board should institute trial.” According to papers filed by Nuna, a legal assistant for Nuna’s counsel checked the docket on October 2 and discovered for the first time that the exhibits had not been filed. Nuna then filed the exhibits and sought leave to file a motion to excuse the late filing. The PTAB granted Nuna leave and authorized Britax to file an opposition.

Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.” Nuna put forward various reasons why good cause existed, but the PTAB disagreed.

Nuna first argued that good cause existed because the PTAB routinely allows petitioners to correct mistakes in petition filings, including the failure to properly upload exhibits. However, according to the PTAB, the fact that other panels allow correction of clerical errors does not establish per se good cause. The PTAB held that Nuna was given the opportunity to correct its error when the PTAB issued its Notice, and Nuna’s failure to correct within the allotted time meant that there was no good cause for an untimely correction.

Nuna also argued that good cause existed because Britax was on notice of the basis for relief and suffered no prejudice. The PTAB agreed that there was no prejudice here, but it found that the lack of prejudice does not demonstrate good cause to excuse a late filing. The PTAB similarly found that Nuna’s alleged “good-faith” belief that it had correctly filed the exhibits did not absolve Nuna of its responsibility to check that the filing was properly completed, especially in light of the notice provided by the PTAB.

Finally, the PTAB did not find that it was in the interests of justice to accept the late filings, despite the prejudice to Nuna of being time-barred from filing a new petition. The PTAB noted that there is no automatic right to petition for IPR and that there was no justifiable excuse for Nuna’s failure to file within the limits set by Congress. Accordingly, Nuna’s motion to excuse the late filing was denied, and every exhibit accompanying its petition was expunged.

Practice Tip: After every filing, a party should check the PTAB’s End to End docketing system to confirm that all documents and exhibits were uploaded and filed properly. Likewise, it is important to analyze thoroughly every notice and order issued by the PTAB—including seemingly routine ones—to avoid missing important instructions.

Nuna Baby Essentials, Inc. et al. v. Britax Child Safety, Inc., IPR2018-01683, Paper 11 (P.T.A.B. Dec. 18, 2018)

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