Takeaway: A typographical error in the petition causing the Board to overlook claims in one of the grounds of the petition may constitute a proper basis for the granting of a petitioner’s request for rehearing. Continue reading
Takeaway: If a petition includes a typographical error that leads to a decision not to institute, the correct course of action is not to file a request for rehearing, but instead to file a motion to correct the petition with a request to modify the decision.
In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute review of claims 3, 26, and 27 of the ’792 Patent. In its Decision on Institution, the Board instituted review of claims 1, 2, and 4-17, but declined institution of claims 3, 26, and 27. Continue reading
Takeaway: A petitioner may be allowed to file a corrected declaration to address improper incorporation by reference in an original declaration where the petition already properly cites to both the declaration and the material incorporated by reference, and the patent owner would not be prejudiced by the correction.
In its Order, the Board granted Petitioner’s request to file a corrected declaration to expressly include materials that were previously incorporated by reference and to file a corrected Petition to change the citations accordingly. Continue reading
In its Decision, the Board granted Petitioner’s Second Motion to Correct a Clerical Mistake in the Petition. Petitioner previously filed a motion to correct a clerical mistake in the petition that was denied without prejudice for failure to set forth a full statement of the reasons for relief requested as required by 37 C.F.R. § 42.22(a)(2). In the Second Motion, Petitioner provided further information. Petitioner sought to file a corrected version of Exhibit 1007 to its Petition because an inadvertent error in labeling computer files led to an incorrect version of Exhibit 1007 being filed. Petitioner also asserted that filing a corrected version of Exhibit 1007 would have no substantive effect on the proceeding because Patent Owner was able to adequately respond to the Petition, Patent Owner indicated it would not oppose the correction, and the Petition as filed already refers to the corrected version of Exhibit 1007. Because of the lack of prejudice to Patent Owner, the Board was persuaded that the relief requested was warranted. Continue reading
In its Order, the Board denied Petitioner’s Motion for Leave to File a Motion to Amend the Petition. Petitioner sought authorization to file a motion to include a review of dependent claims 2-11 of the ’901 Patent under 35 U.S.C. § 112, first paragraph, in CBM2014-00070. Petitioner stated that it accidentally neglected to include the challenge originally, but did not provide any authority supporting its position that it should be allowed to add challenges to claims to the CBM review on a basis not presented in the Petition. The Board stated that the Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based.” 35 U.S.C. § 322(a)(3). Because Petitioner did not do so, the Board denied the Motion, but noted that Petitioner may file a separate petition on these grounds. Continue reading
In its Order, the Board granted Petitioner authorization to file a motion to correct a clerical error. Petitioner filed a document that purported to be a petition, but mistakenly filed an exhibit to the petition in its place. Two days later, once Petitioner realized the mistake, it filed the Petition with a letter requesting that because the error was unintentional, the correct filing date should be the original filing date. Patent Owner opposed the request to the extent that a motion had not been filed. The Board noted that requests for relief should be filed as motions, and such motions generally require authorization from the Board before filing. The Board then treated the letter as a request for authorization to file a motion to correct a clerical error. Continue reading
In its Order, the Board dismissed the Petitions in CBM2014-00142 (“the ’142 Petition”) and CBM2014-00147 (“the ’147 Petition”) for being filed late. Petitioner had filed three defective petitions and was given the opportunity by the Board to make appropriate corrections within five business days. One corrected petition was timely filed, but the corrected ’142 Petition was filed 74 days late and the corrected ’147 Petition was filed 64 days late. The Order dismissing petitions addressed each of these in turn. Continue reading
In its Order, the Board accorded the Petition a filing date of January 21, 2014. Also, the Board authorized Petitioner to file a motion requesting that the Petition be accorded an earlier filing date of January 18, 2014, and authorized Patent Owner to file an opposition to any such motion. Continue reading
In its Order, the Board granted Petitioner’s request to correct a filing error. Petitioner filed the declaration of its expert without including his curriculum vitae, despite indicating that it was attached. Patent Owner opposed the request because it already filed its Preliminary Response, in which it challenged the declaration under Federal Rule of Evidence 702. The Board found that Patent Owner could have asked Petitioner for a copy of the curriculum vitae because it was obvious from the declaration that Petitioner intended to submit it. Further, if inter partes review is instituted, Patent Owner will have the right to file a response in which it can address any perceived deficiencies of the declaration. Continue reading