Macauto v. Baumeister & Ostler (IPR2012-00004): A Notice of Defective Petition

Before a panel looks at the merits, the Board checks every petition for formal compliance. Macauto USA v. Baumeister & Ostler GmbH & Co., IPR2012-00004, shows that review at work. Macauto filed its inter partes review petition on U.S. Patent 6,422,291 on September 16, 2012, the first day petitions could be filed. The Board mailed a notice of defective petition five days later, on September 21, 2012.

The parties later settled; the Board’s order on termination (Paper 21) is covered separately.

Background

The notice said the petition was “complete but contains” defects. That wording distinguishes two kinds of problems the Board’s staff identify at filing:

• An incomplete petition lacks something needed for a filing date under 37 C.F.R. § 42.106(a), such as compliance with the petition requirements, the fee or service. No filing date is accorded until it is fixed, as in Ariosa v. Isis.
• A defective petition has a filing date but fails other formal requirements. Macauto’s petition was in this category.

What the notice required

The notice listed four defects:

1. No related matters. The petition did not identify related matters or state that there were none. 37 C.F.R. § 42.8(b)(2) requires each party to identify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.
2. Exhibit numbering. The exhibits were labeled alphabetically. Under 37 C.F.R. § 42.63(c), petitioner exhibits are numbered sequentially in the 1001–1999 range.
3. No lead counsel. The petition did not designate lead counsel, as § 42.8(b)(3) and § 42.10 require.
4. No back-up counsel. Nor did it designate back-up counsel.

Macauto had five business days to correct the defects. The notice stated that no substantive changes, such as new grounds, could be made. If the defects were corrected within that time without introducing new ones, the petition would keep its original filing date. If not, the proceeding could be terminated. The notice also reminded the parties that filings had to be made electronically unless 37 C.F.R. § 42.6(b)(2) permitted otherwise.

Why it matters

Filing date protection. A defective petition keeps its filing date if the defects are cured promptly. That matters because the filing date determines whether the one-year bar in 35 U.S.C. § 315(b) is met. An incomplete petition, by contrast, receives a later filing date once completed.

Mandatory notices are not optional. Related matters, counsel designations and service information under § 42.8 are often overlooked but always required. The patent owner has its own mandatory notice obligations, due within 21 days of service of the petition (§ 42.8(a)(2)); see the Liberty Mutual filing-date notice.

Correction is not amendment. A correction period cannot be used to add grounds or rework arguments. Substantive changes generally require a new petition, with a new filing date.

A practical checklist drawn from the notice:

• identify related matters, or state there are none;
• number exhibits 1001 onward and keep the exhibit list consistent with the uploads;
• designate lead and back-up counsel and give service information;
• file through the Board’s electronic system.

See the basics of an IPR petition. Correction periods and filing-date practice are set by the Board and may change; readers should check current USPTO guidance.

Key takeaways

• Macauto’s petition was complete but defective: missing related matters and counsel designations, and misnumbered exhibits.
• Defects could be corrected within five business days, without substantive change, while keeping the original filing date.
• A defective petition differs from an incomplete one, which receives no filing date until corrected.
• Mandatory notices under § 42.8 and exhibit numbering under § 42.63(c) apply to every petition.