Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC

When a petitioner pays the inter partes review fee by Fedwire transfer, following the USPTO's published wire instructions, a Fedwire confirmation of payment is sufficient evidence that the fee "accompanied" the petition under 35 U.S.C. § 312(a)(1) and 37 C.F.R. § 42.103(a), and that "payment [was] received" under 37 C.F.R. § 42.103(b), on the date the USPTO's designated bank (Treasury NYC) received the funds. The Board therefore accords the petition a filing date of that day, even if the USPTO's internal processing or settlement of the funds occurs later. No prior precedent directly addressed this issue; the Precedential Opinion Panel vacated the Board's earlier split decision (Paper 9), which had treated the later "settlement date" as the date the USPTO received payment. A petitioner who wires the fee per USPTO instructions can rely on its Fedwire confirmation to fix the filing date, which can decide whether a § 315(b) time bar applies, and need not show that funds reached the USPTO itself. A patent owner can no longer argue that payment is incomplete until Treasury NYC passes the funds to the USPTO, or that RAD Helpdesk emails saying funds were not yet received are controlling. The Board relied on the federal regulations governing Fedwire transfers (12 C.F.R. Subpart B of Part 210, Appendix B, incorporating UCC Article 4A, and 12 C.F.R. § 210.25), but the decision cites no Federal Circuit or Supreme Court authority for this holding. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 312(a)(1) a petition may be considered only if "the petition is accompanied by payment of the fee established by the Director under section 311," and under 37 C.F.R. § 42.103(a) the fee "must accompany the petition" and under § 42.103(b) "[n]o filing date will be accorded to the petition until full payment is received." The Board asked whether the Fedwire confirmation was sufficient evidence of these. It looked to whether the petitioner followed the USPTO's published wire instructions, whether the full fee reached the USPTO's designated bank, and whether UCC Article 4A (Appendix B) sections 4A-209(b)(2) and 4A-406 treat that receipt as payment to the USPTO. TRIGGERING FACTS: Petitioner filed the Petition through PTAB E2E on December 16, 2020, and the same day wired $41,500 to Treasury NYC, the USPTO's designated bank. Its Wells Fargo receipt showed the wire as "Completed" and "Successful" at 2:46 pm ET, and the Fedwire Detail Report showed acceptance at 2:56 pm ET that day. The wire included the required fields in the USPTO's instructions (Receiver ABA short name and routing number, beneficiary account number and name, originator, amount, and originator-to-beneficiary information). The USPTO RAD Helpdesk said on December 16 and 17 that it had not yet received the wire, and the funds settled December 18. The Petition was filed more than one year after service of the complaint, so the filing date mattered for § 315(b). KEY QUOTE: "We conclude that Petitioner’s Fedwire confirmation constitutes sufficient evidence that Petitioner’s inter partes review fee accompanied the Petition under 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103(a), and that payment was “received” under 37 C.F.R. § 42.103(b), on December 16, 2020." (Paper 20, p. 15) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision vacates the Board's own earlier decision in this proceeding (Paper 9), which denied the Motion to Correct Filing Date. PRACTICE TIP: If you pay by wire, follow the USPTO's published Fedwire instructions exactly, file the petition the same day, and keep the Fedwire confirmation (and any bank or Fedwire detail records) so you can prove the date Treasury NYC received the full fee. A RAD Helpdesk email saying the funds have not been received does not defeat that proof, but do not rely on the point where a time bar is at stake. Seek to correct the filing date promptly and support it with the confirmation.