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.
Petitioner filed a Motion to Correct on December 13, 2013, along with the original forms of the two foreign patents and their respective English-language translations and Patent Owner opposed the Motion, arguing that the Motion to Correct should not be granted because this would impermissibly waive the statutory requirements of 35 U.S.C. § 312(a)(3)(A) and (a)(5). The Board granted the Motion to Correct in its Decision to Institute and the Patent Owner filed its Request for Rehearing.
The Board denied the Patent Owner’s Request for Rehearing, because the Patent Owner had failed to persuade the Board that it had abused its discretion in granting the Motion to Correct and considering the Petition. According to the Board, the original Petition filed on September 27, 2013 met all of the regulatory requirements to obtain a filing date. Although the original Petition did not meet the statutory requirement of supplying copies of the non-English versions of the foreign patents under 35 U.S.C. § 312(a)(3)(A), this statutory defect did not preclude the Board from according the Petition its original filing date, and cure of this statutory defect was permitted under 37 C.F.R. § 42.104(c) because it resulted from clerical error and had no material effect on the Patent Owner’s ability to file its Patent Owner Preliminary Response.
Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC, IPR 2013-00631
Paper 20: Decision on Petitioner’s Request for Rehearing
Dated: April 16, 2014
Before: Michael R. Zecher, Benjamin D. M. Wood, and Mitchell G. Weatherly
Written by: Weatherly