U.S. Patent No. 8,266,432
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED SERVICES AUTOMOBILE ASSOCIATION,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`______________
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`CBM2016-00063
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`U.S. PATENT NO. 8,266,432
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`______________
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`MOTION BY PATENT OWNERS PURSUANT TO 37 CFR 41.121
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`TO FILE CERTIFICATE OF CORRECTION UNDER 37 C.F.R. 1.323
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`Comes now the Patent Owner in the above identified CBM and pursuant to the granting
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`of a Request by the Patent Trial and Appeal Board on July 26, 2016 to file a Motion, files this
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`Motion to permit the filing of a Certificate of Correction in the involved patent, No. 8,266,432,
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`together with a Petition to Accept An Unintentionally Delayed Claim For Benefit.
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`The Commissioner is hereby authorized to charge any fees which may be required to
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`Deposit Account No. 50-5922, making reference to Attorney Docket No. LL2890045.
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`1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`
`
`
`Petitioner
`
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`
`Patent Owners
`
`______________
`
`CBM2016-00063
`
`U.S. PATENT NO. 8,266,432
`
`______________
`
`
`
`MOTION BY PATENT OWNERS PURSUANT TO 37 CFR 41.121
`
`TO FILE CERTIFICATE OF CORRECTION UNDER 37 C.F.R. 1.323
`
`
`
`
`
`Comes now the Patent Owner in the above identified CBM and pursuant to the granting
`
`of a Request by the Patent Trial and Appeal Board on July 26, 2016 to file a Motion, files this
`
`Motion to permit the filing of a Certificate of Correction in the involved patent, No. 8,266,432,
`
`together with a Petition to Accept An Unintentionally Delayed Claim For Benefit.
`
`
`
`The Commissioner is hereby authorized to charge any fees which may be required to
`
`Deposit Account No. 50-5922, making reference to Attorney Docket No. LL2890045.
`
`
`
`1
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`U.S. Patent No. 8,266,432
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`Statement of Material Facts.
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`Patent 8,266,432, the involved patent, was issued with a claim for the benefit under 35
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`USC §120 to a first chain of applications, namely continuing application 11/239,046 filed on
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`Sept. 30, 2005, now patent 7,444,676 (the first parent patent), which is a continuing application
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`of application 09/940,635, filed on Aug. 29, 2001, now patent 7,356,837 (the grandparent patent).
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`On February 27, 2016, prior to the filing of the instant CBM case, a Petition was filed in the
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`Patent and Trademark Office to claim the two continuing applications as Continuation-in-Part
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`applications. That Petition is still pending.
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`Three weeks ago, on or about July 6, 2016, while preparing the Patent Owner’s
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`Preliminary Statement in the CBM, it was discovered that a second chain of claiming benefit
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`under Section 120 existed for the involved U.S. patent No. 8,266,432. This chain involved a
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`patent application 11/333,400 filed on Jan. 18, 2006, which is a continuation-in-part of the
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`application of the grandparent patent, now patent 8,281,129 (the second parent application), and
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`which was then copending with the application of the involved patent. The failure to claim the
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`benefit under this second chain was a mistake of a clerical nature, which occurred in good faith,
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`and which was completely unintentional. The Motion to file a Certificate of Correction is to
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`claim the benefit of this second chain of applications. The decision to grant a Certificate of
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`Correction is with the Certificate of Correction Branch of the PTO.
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`In addition, neither the application nor the patent contained a specific reference to the
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`earlier filed applications as required by the statute, 35 USC §120 in order to claim a benefit of
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`the earlier filed application, but the statute further states that the Director may accept an
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`unintentionally delayed submission of an amendment to add such a statement.
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`2
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`U.S. Patent No. 8,266,432
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`Statement of the Reasons for the Relief Requested.
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`The reasons for the requested relief is so that Patent Owner will be able to add a claim
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`priority of an earlier filed non-provisional patent application. Pursuant to 37 CFR 1.323, since
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`the patent is involved in a trial before the PTAB, a substantive motion must first be filed with the
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`PTAB under 37 CFR 41.121(a)(1)(ii), to change benefit. The priority date of Aug. 29, 2001 for
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`the U.S. patent No. 8,266,432 remains unchanged.
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`There are two parts to permit the claim of priority. The first part is to have a Certificate
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`of Correction issued which will show the chain of priority. The second part is to file a Petition
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`for a delayed claiming of the benefits under 35 USC §120 pursuant to 37 CFR §1.78(e).
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`The patent statute, 35 USC §255, recognizes that valuable patent rights can be lost by the
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`clerical error of not promptly claiming the benefit of earlier filed non-provisional patent
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`application with which there is copendency, and specifically provides for the Director to issue a
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`certificate of correction. In 37 CFR 1.323, the PTO Rules expressly provide the procedure for
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`correcting the mistake by the issuance of a Certificate of Correction of Applicant’s mistake. The
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`MPEP in Section 1481 explains the requirements and the details for applying for such a
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`Certificate of Correction. So long as the correction does not involve changes which would
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`constitute new matter or require reexamination, a Certificate of Correction is usually issued by
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`the Certificate of Corrections Branch of the PTO.
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`It has been held that the determination of the priority date (e.g., the effective filing date)
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`is purely a question of law if the facts underlying that determination are undisputed. See
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`Broadcast Innovation, L.L.C. v. Charter Commc’n, Inc., 420 F.3d 1364, 1366 (Fed. Cir. 2005),
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`3
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`U.S. Patent No. 8,266,432
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`and that the PTO provides a procedure for making the appropriate claim. DU PONT DE
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`NEMOURS AND COMPANY V. Macdermid PRINTING, 420 F.3d 1364, 1366 (Fed. Cir. 2008).
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`With the approval of the Certificate of Correction and the granting of a Petition to the
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`PTO to accept an unintentionally delayed claim for the benefit of the prior filed nonprovisional
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`applications, the instant CBM proceeding will be much simpler by adding one more chain of
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`priority.
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`Accordingly, the granting of this motion is respectfully requested.
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` Respectfully submitted,
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`
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` Nader Asghari-Kamrani
`Kamran Asghari-Kamrani
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`By: /Harold L Novick/
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`Harold L Novick
`Registration No. 26,011
`Back-up Counsel for Patent Owner
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`July 27, 2016
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404 Fairfax, VA 22030
`TELEPHONE 703-745-5495
`FACSIMILE 703-563-9748
`EMAIL <docket@nkllaw.com>
`LL2890045; SL
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`4
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`U.S. Patent No. 8,266,432
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq., the undersigned hereby certifies that a
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`Copy of the foregoing was served on Petitioner on July 27, 2016, by delivering a copy via
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`EMAIL to the attorneys of record for the Petitioner at:
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`CBM36137-0007CP1@fr.com
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`PTABInbound@fr.com
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`Dated: July 27, 2016
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`Respectfully submitted,
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` /Harold L Novick/
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`Harold L. Novick
`Back-up Counsel for Patent Owner
`Reg. No. 26,011
`hnovick@nkllaw.com
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax VA 22030
`703-745-5495
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