DiNovo Price LLP | Intellectual Property and Antitrust Litigation Law Firm in Texas | DiNovo Price Secures Decision Denying Institution of <em >Inter Partes </em >Review<em > </em >Regarding Applicability of the “Holiday Rule”
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DiNovo Price Secures Decision Denying Institution of Inter Partes Review Regarding Applicability of the “Holiday Rule”

DiNovo Price is pleased to announce a victory on behalf of our client KOM Software, Inc.  In IPR2019-00597, the PTAB denied institution of inter partes review for U.S. Patent No. 6,654,864, finding that the “holiday rule” applied to extend the patent owner’s deadline to file a continuing application.
The Petitioners, NetApp, Inc. and Hewlett Packard Enterprise Co. argued that KOM Software’s continuing application was not timely filed before the patenting of the parent ’787 application, as required by 35 U.S.C § 120, and was not entitled to claim the benefit of a filing date any earlier than its own filing date. Under 35 U.S.C. § 21(b)––known as the “holiday rule”––“when the last day ‘for taking any action or paying any fee in the [USPTO]’ falls on a holiday,” the action may be taken “on the next secular or business day.” The Petitioners argued the holiday rule did not apply to 35 U.S.C. § 120 because (i) § 120 requires the continuing application be filed before the application to which it claims priority issues as a patent and that (ii) the filing of a continuing application after issuance of the parent violates 37 C.F.R. § 1.78(d) for the same reasons it failed to meet the requirements of 35 U.S.C. § 120.
The PTAB was not persuaded and ruled in favor of the Patent Owner, KOM Software. DiNovo Price argued that the ’864 patent properly claimed priority to its parent ’787 application under 35 U.S.C. § 21(b). The PTAB determined that “[b]ecause January 1, 2002, was a Federal holiday within the District of Columbia, the day for taking any action that was due that day was extended to January 2, 2002, ‘the next succeeding secular or business day.’ Here, the ’787 application issued as a patent on January 1, 2002; therefore, the last day for taking the legal act of filing a continuing application that claims priority to the ’787 application, fell on January 1, 2002.” See Immersion Corp. v. HTC Corp., 826 F.3d 1357, 1365 (Fed. Cir. 2016). The PTAB agreed that the legal act of filing of a continuation is an “action”, as set forth in § 21(b). See Immersion, 826 F.3d at 1359.
The PTAB further rejected Petitioners’ argument that application of the holiday rule would “violate the plain text of § 120,” which affords a continuing application the priority date of its parent only if the continuing application is filed before the patenting of the parent.” Relying on the Federal Circuit authority, the PTAB concluded: 
The Federal Circuit explained that § 120 should be read to accommodate “obvious practical considerations” such as when the filing of the continuing application does not occur “before patenting” of the parent, but rather occurs “within a single day.” Id. Here, when the holiday rule is applied to § 120, the “day” for compliance expands to include the next business day as the day for taking any action. Thus, under the facts before us, the day for taking action included January 2, 2002.
The PTAB also rejected Petitioners’ argument that 37 C.F.R. § 1.78(d) precluded the ’864 patent from claiming priority to the filing date of its parent ’787 application. Petitioners argued 37 C.F.R. § 1.7(a)(6) applied only to “time periods,” and not to the “copending” requirement. The PTAB determined that because “the Patent Office has repeatedly stated that the holiday exception of 35 U.S.C. § 21(b) and 37 C.F.R. § 1.7(a) applies to the filing of continuing applications under § 120, deeming filings to be timely when filed the next business day after the Federal Government offices in the Washington, D.C. metropolitan area are officially closed.”
The case is NetApp, Inc. and Hewlett Packard Enterprise Co, v. KOM Software, Inc., IPR2019-00597, before the Patent Trial and Appeal Board. 

For a copy of the PTAB’s order, click here.

DiNovo Price LLP is an Austin-based law firm that handles patent and antitrust litigation nationwide. DiNovo Price represents inventors, public corporations, privately held businesses, and consumers, both individually and in class actions.