Petitioner Allowed To Correct Clerical Mistake Of Submitting Unexecuted Declaration IPR2015-01332

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Takeaway: In absence of any evidence of prejudice, the Board may allow a party to correct a clerical error by filing a paper “out-of-time.”

In its Order, the Board granted Petitioner’s Motion to Correct a Clerical Mistake Regarding Petition for Inter Partes Review of the ’547 patent. Continue reading

Order Regarding Filing of Exhibits, Corrected Response, and Motion to Seal IPR2014-00367

Takeaway: If a patent owner fails to file a cited exhibit with its Response and does not request permission to file the unfiled exhibit until after the petitioner files its Reply, the Board may deny the request on the grounds that adding new evidence to the record at such a late stage would unduly prejudice the petitioner.

In its Order, the Board denied Patent Owner’s request to file certain exhibits, authorized Patent Owner’s “corrected” Response, and granted Patent Owner’s motion to seal. Continue reading

Granting Motion to Correct Filing Date IPR2015-00239, 240, 241, 242, 243, 247

Takeaway: A petition that is filed late due to a petitioner’s failure to electronically submit a petition in PRPS may still be accorded an earlier filing date if the failure was due to an inadvertent clerical error and all statutory requirements had been otherwise satisfied.

In its Decision, the Board granted Petitioner’s motion to correct the filing date and accorded the Petition a filing date of November 6, 2014. The Board explained that the “purpose of a petition is to give adequate notice to a patent owner of the basis for relief by laying out the grounds of unpatentability proposed by a petitioner, as well as any supporting evidence.” Continue reading

Granting Second Motion to Correct Clerical Error in Petition IPR2014-00833

Takeaway: In making a motion to correct a clerical mistake, the movant must provide sufficient evidence that it is entitled to the relief requested and that the opposing party will not be prejudiced.

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

Denying Motion to Correct Clerical Mistake IPR2014-00833

Takeaway: Even in situations where a motion to correct a clerical mistake in a petition is unopposed, the motion must still set forth a full statement of the reasons why the petitioner is entitled to the relief requested.

In its Decision, the Board denied Petitioner’s unopposed Motion to Correct a Clerical Mistake in the Petition without prejudice. The Petition referred to Exhibit 1007 as Publication No. 2002/0000916 A1, but the filed Exhibit 1007 was a copy of the issued patent corresponding to the referenced publication. Continue reading

Granting Motions to Correct Petition IPR2014-00259, 261, 293, 294

Takeaway: A motion to correct a petition will only be granted if the moving party shows that the errors were typographical or clerical errors.

In its Decision, the Board granted Petitioner’s Motion to Correct the Petition to list “TRW Automotive US LLC” as the petitioner instead of “TRW Automotive Holdings Corporation.” The Board noted that in a ten-day span, eighteen petitions for inter partes review, including the petitions in the four instant proceedings, were filed challenging several of Patent Owner’s patents.  The information entered via the Patent Review Processing System (“PRPS”) identifies TRW Automotive US LLC as the Petitioner in all eighteen proceedings; however, the title page of the Petitions in the four instant proceedings listed “TRW Automotive Holdings Corporation” as the Petitioner. Continue reading

Denying Patent Owner’s Request for Rehearing on Motion to Correct Petition IPR2013-00631

Takeaway: It is possible to correct clerical defects in a Petition in some cases, thereby maintaining the Petition filing date, even when the defect is a statutory one if the clerical defect has no material effect on Patent Owner’s ability to file a Preliminary Response.

In its Decision, the Board denied Patent Owner’s Request for Rehearing Petitioner’s Motion to Correct the Petition. Petitioner filed its petition for inter partes review on September 27, 2013. The Petition did not include copies of two relied-upon, non-English foreign patents (although it did provide English-language translations of both patents, and identified both by their respective foreign patent numbers). The Board notified Petitioner of this error, but still accorded the Petition a filing date of September 27, 2013, in a Notice of Filing Date Accorded to Petition issued by the Board on October 1, 2013. Petitioner filed a corrected petition on October 11, 2013, addressing all of the errors in the Board’s October 1 Notice. The Patent Owner filed its Preliminary Response on December 4, 2013, in which the Patent Owner argued that the Board could not consider the Petition because it failed to comply with 35 U.S.C. § 312(a) and because Petitioner had failed to comply with 37 C.F.R. §§ 42.6, 42.63, 42.104, 42.105, and 42.016. Continue reading

Order Denying Motion to Exclude IPR2013-00368

Takeaway: More than one motion to exclude can be filed by each party, but the total count of pages cumulative over all motions to exclude cannot exceed the fifteen-page limit per party.

In its Order, the Board addressed a number of evidentiary issues raised first in a chain of emails and then during a conference call held on March 24, 2014. The Board authorized Patent Owner to file a substitute exhibit to the Patent Owner Response. A number of appendices were apparently omitted from the Exhibit due to a clerical error. The Board ordered that Petitioner must serve any objections to the appendices within five days of service of the substitute Exhibit. Continue reading

Granting in Part Request for Rehearing IPR2013-00624

Takeaway: The Board cannot waive statutory requirements for filing a petition, but is allowed to waive regulations related to filing a petition.

In its Order, the Board denied in part Patent Owner’s Request for Rehearing regarding the Board’s decision to grant Petitioner’s Motion to Correct the petition’s filing date. However, Patent Owner’s request was only granted to the extent the Board modified its prior decision to exercise discretion under 37 C.F.R. § 42.5(b). The Board’s prior decision granted Petitioner’s request to accord the petition a filing date as of when the petition files were uploaded (September 25, 2013) rather than the date when Petitioner actually clicked on the “Submit” button in the Patent Review Processing System (“PRPS”) (October 2, 2013). Continue reading