Takeaway: When a Patent Owner seeks correction of an error in a patent that is involved in a trial before the Board, a request for a certificate of correction must be accompanied by a motion to file the request.
In its Order, the Board authorized Patent Owner to file a request for certificate of correction to correct a “printing error” in claim 14 of U.S. Patent No. 8,392,684 B2.
In the proceeding, Patent Owner argued that there was a “printing error” in claim 14 of the ’684 patent. Specifically, it argued that claim 14 of the ’684 patent, as issued, depends from claim 9, but should depend from claim 8. Patent Owner attempted to correct this error via a motion to amend. Petitioner argued in its Opposition that the proposed substitute claim is improper because it does not include all of the limitations of its corresponding claim (because it depends from the proposed substitute for claim 8 instead of claim 9). With the Board’s permission, the parties filed supplemental briefs on this topic.
Patent Owner subsequently filed a request for a certificate of correction in the underlying application file for the ’684 patent. However, pursuant to 37 C.F.R. § 1.322(a)(3), a request for a certificate of correction relating to a patent involved in a trial before the Board must be accompanied by a motion, and Patent Owner’s request was not accompanied by a motion.
Patent Owner argued that its supplemental brief could be treated as a motion or, alternatively, that it could move orally during the call. Petitioner stated that it would not oppose the motion and acknowledged that it did not have any evidence refuting Patent Owner’s substantive allegation that claim 14 contains a “printing error.”
The Board concluded that, under the circumstances of this proceeding, it was persuaded that Patent Owner’s explanation was sufficient to justify the filing of its request for certificate of correction, decided to treat Patent Owner’s supplemental brief as a motion, and granted the motion nunc pro tunc.
Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245
Patent No.: 8,392,684 B2
Paper 34: Order on Conduct of the Proceeding
Dated: December 15, 2014
Before: Denise M. Pothier, Justin T. Arbes, and Hyun J. Jung
Written by: Arbes