Granting Motions to Correct Petition IPR2014-00259, 261, 293, 294


Takeaway: A motion to correct a petition will only be granted if the moving party shows that the errors were typographical or clerical errors.

In its Decision, the Board granted Petitioner’s Motion to Correct the Petition to list “TRW Automotive US LLC” as the petitioner instead of “TRW Automotive Holdings Corporation.” The Board noted that in a ten-day span, eighteen petitions for inter partes review, including the petitions in the four instant proceedings, were filed challenging several of Patent Owner’s patents.  The information entered via the Patent Review Processing System (“PRPS”) identifies TRW Automotive US LLC as the Petitioner in all eighteen proceedings; however, the title page of the Petitions in the four instant proceedings listed “TRW Automotive Holdings Corporation” as the Petitioner.

The Board, relying on 37 C.F.R. § 42.104(c), stated that a motion may be filed to correct a clerical or typographical mistake in the petition. Although this rule is entitled to a liberal interpretation, the Board noted that the burden is with the moving party to establish that the purported errors are clerical or typographical mistakes.  Petitioner stated that the USPTO records clearly indicate that the Petitions were filed on behalf of TRW Automotive US LLC, and that each Petition stated that TRW Automotive Holdings Corp. is a defendant in the related litigation “other” than Petitioner.  The Board stated that this was persuasive evidence that the Petitions contained a clerical error.

Patent Owner opposed the Motions stating that Petitioner did not attempt to explain how the mistake was made and that the mistakes were not clerical or typographical, but the Board did not agree. Patent Owner also argued that Petitioner did not serve its Motions in compliance with the rules.  The Board agreed that Petitioner served via U.S. Mail, which fails to comply with the rules; however, the Board declined to expunge the Motions because the error was harmless and Patent Owner received notice of the Motions.   The Board cautioned the parties to follow the rules going forward and encouraged them to agree to electronic service.

TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00259; IPR2014-00261; IPR2014-00293; IPR2014-00249
Paper 16: Decision on Motion to Correct Petition
Dated: May 9, 2014
Patents 7,344,261; 7,339,149; 8,314,689
Before: Justin T. Arbes, Patrick R. Scanlon, Bart A. Gerstenblith, Jo-Anne M. Kokoski, and Frances L. Ippolito
Written by: Scanlon