Facebook, Inc. v. Rembrandt Social Media, L.P.

In an order granting a request for rehearing to address the issue of a filing date of a petition for inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) granted a request for rehearing to clarify that service of the petition by electronic means or Express Mail is not required to be accorded a filing date, finding that the petition was accorded the proper filing date. Facebook, Inc. v. Rembrandt Social Media, L.P., Case IPR2014-00415 (PTAB, July 31, 2014) (Clements, APJ).

Patent owner, Rembrandt Social Media, requested a rehearing for the Board’s decision to institute the IPR. In the decision to be reheard, the Board stated that “mailing via FedEx after the cut-off time on Thursday [February 6, 2014] without electing Saturday delivery failed to comply with 37 C.F.R. § 42.105(b),” but accorded a filing date of February 6, 2014. The patent owner argued that the Board misapprehended the standard for determining whether a failure to effect service was “harmless” by focusing on whether patent owner’s ability to respond was prejudiced rather than on whether the failure to follow the rule was outcome determinative.

The Board did not find patent owner’s argument persuasive but granted the rehearing in order to revisit the Board’s statement. The Board found that petitioner Facebook did not fail to comply with § 42.106, which states that “[a] petition to institute inter partes review will not be accorded a filing date until the petition . . . [e]ffects service of the petition on the correspondence address of record as provided in [§] 42.105(a).” The Board found that § 42.106(a)(2) does not require compliance with § 42.105(b) for a filing date to be accorded, thus the petition complied with § 42.106 and was accorded a proper filing date.