Takeaway: Under 37 C.F.R. § 42.104(c), a motion may be filed to correct a mistake in the petition without changing the filing date of the petition, but only if the mistake is a clerical or typographical mistake.

In its Order, the Board denied Petitioner’s request for authorization to file a third corrected petition.  Petitioner had requested such authorization, because one of the limitations in claim 30 (referenced in the Order as “element 30.a.1”) was inadvertently omitted from the claim chart submitted in support of Petitioner’s anticipation challenge to claim 30 based on Kapidzic.

Petitioner sought to rectify this error via a motion to correct under 37 C.F.R. § 42.104(c), asserting that the omission was a clerical or typographical error.  At the same time, however, Petitioner indicated that “the petition included sufficient argument and evidence such that Petitioner’s challenge to claim 30 as anticipated by Kapidzic was still supported;” and that element 30.a1 was also found in challenged claim 18, with the information applied for element 30.a1 in connection with claim 18 also being applicable to the recitation of that limitation in claim 30.  Petitioner asserted that the filing of a third corrected petition would not prejudice Patent Owner because Petitioner had not “[responded] substantively to the challenges in the Patent Owner preliminary response.”

Patent Owner responded by arguing that it would be prejudiced because it had already filed its preliminary response with arguments relating to this particular omission.  Moreover, Patent Owner asserted that rather than being clerical or typographical, the proposed changes were substantive.

The Board agreed with Patent Owner that the proposed amendment was not the result of a typographical or clerical error of the type that could be corrected under 37 C.F.R. § 42.104(c).  The Board also agreed that because Patent Owner had already filed a preliminary response, authorizing Petitioner to file a third corrected petition would introduce impermissible delay into the proceeding, which would be inconsistent with the Board’s requirement to meet the statutory deadline for rendering a decision to institute under 35 U.S.C. § 314(b).  Consequently, the Board did not authorize Petitioner to file a motion to correct the petition for the third time.

International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00660
Paper 17: Order on Conduct of the Proceeding
Dated: July 31, 2014
Patent 5,745,574
Before: Jennifer S. Bisk, Kristen L. Droesch, and Justin Busch
Written by: Busch