CAFC Endorses PTAB Practice of Accepting Late RPI Designations

Statutory Petition Requirement Correctable

Back in April I discussed the Patent Trial & Appeal Board’s (PTAB) evolving position that an updated RPI designation did not require a resetting of the petition filing date. That is, despite telling Congress that the RPI was a statutory requirement for a petition to be considered in 2015, and that correction of RPI required a new filing date, the Board migrated to a new view that such mistakes could be excused if made without deceptive intent (more recently relying on a footnote in Wifi-One explaining the Board’s practice of accepting corrections to defective filings.)

Last week, the Federal Circuit issued a precedential opinion finding that the PTAB’s interpretation of its remedial regulations in this regard were not plainly erroneous or inconsistent.

In Mayne Pharma International Pty v. Merck Sharp & Dohme Corp. (here) the Petitioner failed to identify Merck & Co., Inc. (“MCI”) as an RPI. At institution, the Board found the evidence of record did not prove that MCI had control of the proceedings. Mayne requested rehearing of the institution decision and alleged the Board abused its discretion. The Board denied the rehearing explaining that there was “no indication of intentional concealment, bad faith on Petitioner’s part, an attempt to circumvent estoppel rules, or any other material benefit to Petitioner” in the delay in naming MCI. As such, the Board authorized amendment of the mandatory notice without changing the filing date, and MCI was added as an RPI.

In reviewing the Board’s decision, the Federal Circuit applied Chevron deference. The court noted all RPIs agreed to be bound by the estoppel flowing from the proceeding, the Board was properly apprised of conflicts relating to MCI from the identification of MSD, and no evidence of concealment was of record. And, Mayne was not prejudiced because it was aware of MCI as a named defendant in parallel district court litigation. In view of these factors, the Court found the Board’s interpretation of its regulation was not plainly erroneous or inconsistent.

The court also opined that “unwinding the proceedings based on a strict view of the real-party-in interest disclosure requirement would be at odds” with the Patent Office’s policy of securing a just, speedy, and inexpensive resolution of every proceedings. Of course, policy considerations cannot rewrite the plain language of a statute. Still, the Court cited an aspect of Cuozzo that it believed supported its decision:

" We doubt that Congress would have granted the Patent Office [significant power to revisit and revise earlier patent grants], including, for example, the ability to continue proceedings even after the original petitioner settles and drops out, § 317(a), if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review.

And yet, that is exactly what had been happening for years until the agency’s evolution. In any event, the ability to correct straight forward oversights is certainly a better way to run the railroad. Going forward, perhaps this will dampen the enthusiasm for such disputes — at least in these types of circumstances.

Scott A. McKeown is an author of the Patents Post Grant