FedEx Next-Day Delivery Found to Constitute Sufficient Service of a CBM Petition

Unless the parties agree otherwise, service of a CBM petition may be by USPS Priority Mail Express or “by means at least as fast and reliable” as Priority Mail Express. 37 C.F.R. § 42.205(b). Other AIA Trial rules regarding the service of documents apply the same standard. See 37 C.F.R. § 42.6(e)(1) (service in general); 37 C.F.R. § 42.105(b) (service of IPR petition); 37 C.F.R. § 42.205(b) (service of PGR petition); 37 C.F.R. § 42.406(b) (service of petition for derivation proceeding); see also 37 C.F.R. § 41.106 (service in contested cases). In TIZ Inc. v. Smith, CBM2020-00029, Paper 17 (PTAB Mar. 25, 2021) the Board considered whether a CBM petition delivered via FedEx next-day delivery satisfied the “at least as fast and reliable” standard and found it to constitute proper service.

In TIZ, the petitioner filed its CBM petition on September 15, 2020, which was the last day any petition could be filed before the sunset of the CBM program. On the same day, the petitioner emailed courtesy copies of the filed petition to the patent owner’s counsel of record and deposited hard copies of the documents for delivery via FedEx next-day delivery. FedEx delivered the filed documents to the patent owner’s counsel on the following day.

In light of the CBM program’s September 15 sunset date, the patent owner argued that the petition was untimely because FedEx delivered copies of the filed documents on September 16. The Board rejected the petitioner’s argument and refused to deny CBM review based on the delivery date for two main reasons.

First, the Board found that FedEx’s next-day priority is “means at least as fast and reliable” as Priority Mail Express. Priority Mail Express guarantees 1-day or 2-day expedited services, while FedEx’s next day service is at least a fast. Citing other Board decisions finding FedEx’s next-day service to satisfy the AIA Trial rules, the Board concluded the FedEx next-day service to be “sufficiently akin to Priority Mail Express to satisfy the service requirement of § 42.205(b).”

            Additionally, the Board noted that the service deadlines are not set by statute and that the patent owner did not establish any actual harm or prejudice from the next-day receipt. Accordingly, under 37 C.F.R. § 42.5(b), the Board affirmatively waived the regulatory requirements regarding service deadlines to the extent necessary, and held that the service by FedEx next-day delivery was sufficient on this second basis.