Takeaway: The Board may grant a motion to correct a petition filing date if it can be shown that the inadvertent submission of an incorrect document in place of an intended exhibit was the result of clerical error.
In its Decision, the Board granted Petitioner’s Motion to Correct the Petition Filing Date, which Patent Owner did not oppose. In particular, the Board accorded the Petition a filing date of January 18, 2014.
Petitioner had filed its Petition on January 18, 2014 via the Patent Review Processing System (PRPS). Petitioner had submitted a number of exhibits along with the Petition, including Exhibit 1109 which was intended to be a Declaration of Chris B. Schechter. However, the document submitted via PRPS on that date was actually a copy of U.S. Patent Application Publication No. 2004/0202872 A1. Several days later, on January 21, 2014, Petitioner filed Mr. Schechter’s declaration, taking care to number it also as Exhibit 1109. The Board accorded the Petition a filing date of January 21, 2014, rather than January 18, 2014. 35 U.S.C. § 312(a)(3)(B).
In its Motion to Correct the Petition Filing Date, Petitioner argued that the Petition should be given the earlier filing date of January 18, 2014 because the submission of the incorrect version of Exhibit 1109 was the result of clerical error. In support of this argument, Petitioner filed a Declaration describing the actions taken by the attorney who submitted the exhibits at the time the Petition was filed. In particular, it was asserted that Petitioner’s counsel inadvertently labeled two files as Exhibit 1109, and then mistakenly uploaded the incorrect version to PRPS. Upon learning of this error, Petitioner’s counsel notified the Board on the following business day (January 21, 2014), and filed the correct version of Exhibit 1109 on that day.
The Board was persuaded that the filing of the incorrect version of Exhibit 1109 was a clerical error, and thus accorded the Petition the earlier filing date. In support of its decision, the Board cited the exhibit list and body of the Petition, which referenced the declaration as Exhibit 1109 throughout; the fact that the service copy of Exhibit 1109 provided by Petitioner to Patent Owner was Mr. Schechter’s declaration; and previous cases decided by the Board in which similar mistakes were found to have been found correctable “upon a sufficient showing from the filing party that the error was clerical in nature.
Schott Gemtron Corporation, IPR2014-00367
Paper 30: Decision on Petitioner’s Motion to Correct Filing Date
Dated: September 22, 2014
Patent 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Arbes