Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 10
`Entered: August 4, 2016
`
`
`
`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 Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Motion to File a Request for a Certificate of Correction
`37 C.F.R. §§ 42.20 and 1.323
`
`
`On July 27, 2016, Patent Owner filed a Motion to File a Request for a
`Certificate of Correction, seeking to correct U.S. Patent No. 8,266,432 B2
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases.
`
`
`571-272-7822
`
`
`
`Paper 10
`Entered: August 4, 2016
`
`
`
`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 Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Motion to File a Request for a Certificate of Correction
`37 C.F.R. §§ 42.20 and 1.323
`
`
`On July 27, 2016, Patent Owner filed a Motion to File a Request for a
`Certificate of Correction, seeking to correct U.S. Patent No. 8,266,432 B2
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases.
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`(Ex. 1001, “the ’432 patent”) with respect to the benefit claim of prior-filed
`applications. Paper 82 (“Mot.”). Petitioner opposes. Paper 9 (“Opp.”). For
`the reasons articulated below, Patent Owner’s Motion is granted, authorizing
`Patent Owner to file a request for a certificate of correction and to file a
`petition to accept an unintentionally delayed benefit claim.
`We observe that the Director has the authority to issue a certificate of
`correction of applicant’s mistake, pursuant to 35 U.S.C. § 255, which, in
`part, states:
`Whenever a mistake of a clerical or typographical nature, or of
`minor character, which was not the fault of the Patent and
`Trademark Office, appears in a patent and a showing has been
`made that such mistake occurred in good faith, the Director may,
`upon payment of the required fee, issue a certificate of
`correction, if the correction does not involve such changes in the
`patent as would constitute new matter or would require
`reexamination.
`A patent owner may file a request for such a certificate under 37 C.F.R.
`§ 1.323, which states:
`The Office may issue a certificate of correction under the
`conditions specified in 35 U.S.C. § 255 at the request of the
`patentee or the patentee’s assignee, upon payment of the fee set
`forth in § 1.20(a). If the request relates to a patent involved in an
`interference or trial before the Patent Trial and Appeal Board, the
`request must comply with the requirements of this section and be
`accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3)
`or § 42.20 of this title.
`
`
`2 All citations are to CBM2016-00063, as representative, unless otherwise
`noted.
`
`2
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`Additionally, a patent owner, who is seeking to add a benefit claim under
`35 U.S.C. § 120 in a patent, must file a petition under 37 C.F.R. § 1.78(e) to
`accept an unintentionally delayed benefit claim. See § 1481.03 of the
`Manual of Patent Examining Procedure, 9th ed. Rev. 7 (2015). Such a
`petition must be accompanied by: (1) a statement that the entire delay
`between the date the benefit claim was due and the date the benefit claim
`was filed was unintentional; (2) the specific reference required by 35 U.S.C.
`§ 120 and 37 C.F.R. § 1.78(d)(2); and (3) the required petition fee. See
`37 C.F.R. § 1.78(e).
`Here, the application that issued as the ’432 patent has an actual filing
`date of September 15, 2008. Ex. 1001 at [22]. The ’432 patent currently
`claims the benefit of the following two prior-filed nonprovisional
`applications:
`(1) U.S. Patent Application No. 09/940,635 (Ex. 1016, “the first
`prior-filed application”), which was filed on August 29, 2001, and issued as
`U.S. Patent No. 7,356,837 B2 on April 8, 2008 (Ex. 1005 at [22], [45]); and
`(2) U.S. Patent Application No. 11/239,046 (Ex. 1014, “the second
`prior-filed application”), which was filed on September 30, 2005, and issued
`as U.S. Patent No. 7,444,676 B1 on October 28, 2008 (Ex. 1015 at [22],
`[45]). Ex. 1001 at [63], 1:6–17.
`On the present record, the front page of the ’432 patent shows that the
`’432 patent is a continuation of the second prior-filed application, which is a
`continuation of the first prior-filed application. Ex. 1001 at [63], 1:6–17.
`However, Patent Owner indicates that it filed a petition under 37 C.F.R.
`
`3
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`§ 1.78(e), “to claim the two continuing applications as Continuation-in-Part
`applications.” Mot. 2 (emphasis added). According to Patent Owner, that
`petition is still pending. Id. A review of the patent file of the ’432 patent
`shows that Patent Owner also filed a request for a certificate of correction on
`February 22, 2016, seeking to correct the benefit claims in the ’432 patent as
`follows:
`Continuation Continuation-in-part
`application No.
`of
`11/239,046, filed on Sep. 30, 2005, now Pat No. 7,444,676,
`which is a continuation continuation-in-part of application No.
`09/940,635, filed on Aug. 29, 2001, now Pat. No. 7,356,837.
`See Ex. 3001, 3 (annotations added).
`In its Petition (Paper 2, “Pet.”), Petitioner argues that the ’432 patent
`does not have a proper benefit claim under 35 U.S.C. § 120 to either
`prior-filed application because there is no copendency between the
`’432 patent and the first prior-filed application, and the second prior-filed
`application does not provide adequate written description support for the
`claims of the ’432 patent. Pet. 16–28. Additionally, each ground of
`unpatentability asserted by Petitioner is based on at least one intervening
`reference that has a filing date or publication date before the actual filing
`date of the ’432 patent, but after the filing date of the first prior-filed
`application. Id. at 3–4; Ex. 1032 at [22] (filed on December 12, 2005), [43]
`(published on May 4, 2006); CBM2016-00064, Ex. 1034 at [22] (filed on
`July 14, 2006), [54] (published on January 25, 2007).
`
`Patent Owner now seeks to claim the benefit of a third prior-filed
`application, as an intermediate to the first prior-filed application. Mot. 2–3.
`
`4
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`In its Motion, Patent Owner contends that it recently discovered a second
`chain of benefit claim—namely, that the ’432 patent allegedly is a
`continuation-in-part of U.S. Patent Application No. 11/333,400, filed on
`January 18, 2006, and issued as U.S. Patent No. 8,281,129 B1 (Ex. 3002),
`which is a continuation-in-part of U.S. Patent Application No. 09/940,635,
`filed on August 29, 2001, and issued as U.S. Patent No. 7,356,837 B2.
`Mot. 2–3. Essentially, the second chain claims the benefit of the first
`prior-filed application through the third prior-filed application (i.e., U.S.
`Patent Application No. 11/333,400), whereas the first chain uses the second
`prior-filed application as an intermediate. Hence, the alleged priority date of
`August 29, 2001, for the ’432 patent would remain unchanged. Id.
`Because the ’432 patent does not include a specific reference, as
`required by 35 U.S.C. § 120 and 37 C.F.R. § 1.78(d)(2), for the second chain
`of benefit claim, Patent Owner requests authorization to file a request for a
`certificate of correction, pursuant to 37 C.F.R. § 1.323, and a petition under
`37 C.F.R. § 1.78(e) to accept an unintentionally delayed submission of an
`amendment to add the specific reference for the second chain of benefit
`claim. Mot. 2–4. Patent Owner’s failure to present the second chain of
`benefit claim is said to be a clerical error that occurred in good faith, and the
`entire delay is purportedly unintentional. Id. at 2.
`In its Opposition, Petitioner advances several arguments. Opp. 1–5.
`First, Petitioner argues that Patent Owner seeks to correct an error that is not
`simply “a mistake of a clerical or typographical nature, or of minor
`character,” as required by 35 U.S.C. § 255. Id. at 1–2. In Petitioner’s view,
`
`5
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`adding the benefit claim as to the third prior-filed application would change
`the meaning and scope of the claims in the ’432 patent. Id. Petitioner’s
`argument, however, is misplaced here because, in the instant Decision, we
`are not deciding whether a request for a certificate of correction should be
`granted pursuant to 35 U.S.C. § 255, as Patent Owner merely is seeking
`authorization for filing such a request. Moreover, we are not the deciding
`official for a request for a certificate of correction. See 35 U.S.C. § 255;
`37 C.F.R. §§ 1.323 and 1.78(e); MPEP §§ 1002.02(b) and 1003.
`Second, Petitioner argues that Patent Owner has not shown that the
`third prior-filed application provides adequate written support for the claims
`of the ’432 patent. Opp. 2. That argument is premature at this juncture, as
`Patent Owner has yet to submit a benefit claim as to the third prior-filed
`application. More importantly, the Office has not accepted such a benefit
`claim, nor issue a certificate of correction with the benefit claim.
`Third, Petitioner argues that Patent Owner has not established that its
`delay in submitting the benefit claim in connection to the third prior-filed
`application is entirely unintentionally, as required by 37 C.F.R. § 1.78(e), or
`that the mistake occurred in good faith, as required by 35 U.S.C. § 255.
`Opp. 2–4. Once again, Petitioner’s argument fails to recognize that we are
`not the deciding official for a request for a certificate of correction, nor for a
`petition to accept an unintentionally delayed benefit claim. See MPEP
`§§ 1002.02(b) and 1003.
`Finally, Petitioner contends that adding a new benefit claim
`complicates the current proceedings, and is highly prejudicial to Petitioner.
`
`6
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`Opp. 4–5. We are not persuaded by Petitioner’s contention. The alleged
`priority date of August 29, 2001, for the ’432 patent remains unchanged
`whether Patent Owner relies upon the second or third prior-filed application,
`as the intermediate, to claim the benefit of the first prior-filed application.
`We are cognizant that Patent Owner may present arguments in its
`Preliminary Response, or in its Response if a trial is instituted, that the
`asserted references are not prior art because the claims in the ’432 patent are
`entitled to the benefit of the filing date of the first prior-filed application
`through the third prior-filed application as the intermediate, to satisfy the
`copendency requirement. See Dynamic Drinkware, LLC v. National
`Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (“The burden of
`production then shifted to [Patent Owner] to argue or produce evidence that
`either [the reference] does not actually anticipate, or, as was argued in this
`case, that [the reference] is not prior art because the asserted claims in the
`[involved] patent are entitled to the benefit of a filing date (constructive or
`otherwise) prior to the filing date of [the reference].”); see also PowerOasis,
`Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When
`neither the PTO nor the board has previously considered priority, there is
`simply no reason to presume that claims in a [continuation-in-part]
`application are entitled to the effective filing date of an earlier filed
`application.”). Should Patent Owner present such arguments in its
`Preliminary Response, we authorize Petitioner to file a Reply to the
`Preliminary Response. Therefore, Petitioner may address the issues of
`whether the third prior-filed application provides adequate written
`
`7
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`description support for the claims of the ’432 patent and whether the claims
`are entitled to the benefit of the filing date of the first prior-filed application,
`in its Replies to Patent Owner’s Preliminary Response and Response.
`
`We further note that granting Patent Owner authorization to file a
`request for a certification of correction and a petition to accept an
`unintentionally delayed benefit claim, at this juncture, would not impact the
`schedule of either CBM proceeding involving the ’432 patent. Both
`proceedings are at a preliminary stage. Patent Owner’s Preliminary
`Responses are due on August 11, 2016. We will decide whether to institute
`a trial in each case based on the information presented in the Petition, taking
`into account Patent Owner’s Preliminary Response, as well as the evidence
`before us, including the ’432 patent, as originally issued, or as corrected
`should a certificate of correction be issued at that time.
`
`In consideration of the totality of the circumstances, we determine that
`authorizing Patent Owner to file a request for a certificate of correction and
`to file a petition to accept an intentionally delayed benefit claim is warranted
`to provide a just, speedy, and inexpensive resolution of the above-identified
`CBM proceedings.
`Accordingly, it is hereby:
`ORDERED that Patent Owner’s Motion to File a Request for a
`Certificate of Correction (Paper 8) is granted;
`FURTHER ORDERED that Patent Owner is authorized to file a
`request for a certificate of correction for the ’432 patent, pursuant to
`37 C.F.R. § 1.323, and a petition under 37 C.F.R. § 1.78(e) to accept an
`
`8
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`unintentionally delayed benefit claim, with respect to the second chain of
`benefit claim—namely, seeking correction to reflect that the ’432 patent is a
`continuation-in-part of U.S. Patent Application No. 11/333,400, filed on
`January 18, 2006, and issued as U.S. Patent No. 8,281,129 B1, which is a
`continuation-in-part of U.S. Patent Application No. 09/940,635, filed on
`August 29, 2001, and issued as U.S. Patent No. 7,356,837 B2;
`FURTHER ORDERED that, in each above-identified CBM
`proceeding, Petitioner is authorized to file a Reply to Patent Owner’s
`Preliminary Response, should Patent Owner present argument in its
`Preliminary Response concerning the second chain of benefit claim;
`FURTHER ORDERED that Petitioner’s Reply is limited to 5 pages in
`length, and it must be filed within two weeks from the filing of the
`Preliminary Response;
`FURTHER ORDERED that a copy of this Decision be included in the
`file of U.S. Patent Application No. 12/210,926; and
`FURTHER ORDERED that when a decision is rendered on any
`request for certificate of correction and petition filed by Patent Owner,
`Patent Owner shall file a copy of the document as an exhibit in the instant
`proceedings.
`
`
`9
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`For PATENT OWNER:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`
`NOVICK, KIM & LEE, PLLC
`skim@nkllaw.com
`hnovick@nkllaw.com
`slee@nkllaw.com
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`
`FISH & RICHARDSON P.C.
`CBM36137-0007CP1@fr.com
`PTABInbound@fr.com
`
`10
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
