Granting Motion for Leave to File Motion to Correct Clerical Error IPR2014-01373


Takeaway: If a party is requesting relief from the Board, it should do so in the form of a motion, which usually also requires that the Board authorize the motion before filing.

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.

The Board then noted that, by statute, an inter partes review proceeding begins with the filing of a petition, the purpose of which is to give adequate notice to the patent owner of the basis for relief.  The Rules state that an incomplete petition will not be accorded a filing date; however, they allow for correction of certain clerical mistakes by motion without changing the filing date of the petition.  The Board stated that the correct Petition appears to have been served on the owner of the ’434 Patent, but that it needs to consider the details of the alleged “clerical” error before granting the motion.  The Board therefore authorized the filing of a motion to correct the clerical mistake and requested “affidavit[s] from the person[s] with knowledge of the details of the error.”

Smart Modular Technologies Inc. v. Netlist, Inc., IPR2014-01373
Paper 9: Order on Conduct of the Proceedings
Dated: September 17, 2014
Patent: 8,001,434
Before: Linda M. Gaudette, Bryan F. Moore, and Georgianna W. Braden
Written by: Moore