January 29, 2023

Volume XIII, Number 29

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January 27, 2023

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Payment Confirmation Establishes Filing Date in IPR Petitions

In a Precedential Opinion Panel, the Patent Trial and Appeal Board held that confirmation of payment of fees via wire transfer was sufficient to establish a filing date for a petition for inter partes review (“IPR”). In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, IPR2021-00330, (PTAB Jan. 14, 2022) (Paper 20), the panel dealt with the issue of what counts as sufficient evidence of compliance with the relevant rules governing IPR fee payments - 35 U.S.C. § 312(a)(1) and 37 C.F.R. §§ 42.103(a)-(b).

To avoid a 35 U.S.C. § 315(b) time-bar, Toshiba filed a Motion to Correct Filing Date, requesting the filing date of their petition be pushed back five days. Toshiba argued that all statutory and regulatory requirements for filing the IPR petition were met on the earlier date, when the wire transfer of fees was shown as “Completed” and “Successful” by the Fedwire system. In response, Monument Peak Ventures argued Toshiba failed to show that the USPTO “received” the payment before the time bar under § 315(b) took effect.

In accordance with 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103, the required filing fee must “accompany” a petition and no filing date will be “accorded … until full payment is received.” The panel held that the Fedwire confirmation was sufficient evidence that the fee “accompanied” the IPR petition because Toshiba “did everything in its power to pay the fee as instructed, and that the fee transfer was successful.” The panel also held that the result complies with Article 4A of the Uniform Commercial Code, which states that an originator of a funds transfer pays the beneficiary once the beneficiary’s bank accepts the transfer.

Based on these determinations, the Panel granted the Request for Rehearing and vacated the Board’s decision denying institution; however, the petition was ultimately denied based on an intervening Federal Circuit Rule 36 judgment affirming a finding that all challenged claims were invalid.

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XII, Number 41
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Law Clerk

Marcelo Barros is a law clerk in Finnegan’s Palo Alto, CA office. He completed his JD at New York University School of Law, and his master's at University of California, San Diego.

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Shannon Patrick focuses on patent litigation related to Abbreviated New Drug Applications (ANDA), patent prosecution, proceedings before the Patent Trial and Appeal Board (PTAB), and client counseling. She has technical experience in the chemical and mechanical fields, including technologies such as aluminum alloys and joining solutions, as well as a background in biology.

Shannon’s litigation experience with district court matters includes preparing motions, managing discovery efforts, and working with expert witnesses. She has participated in...

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Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

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