Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 16
`
` Entered: April 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`____________
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Motion to Correct Exhibit 1007
`37 C.F.R. § 42.104(c)
`
`
`
`
`On March 26, 2015, Petitioner filed, with prior authorization from the
`Board, a Motion to Correct Exhibit 1007 Pursuant to 37 C.F.R. § 42.104(c)
`in IPR2015-00161, IPR2015-00163, and IPR2015-00172. Paper 14
`
`
`571.272.7822
`
`
`Paper No. 16
`
` Entered: April 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`____________
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Motion to Correct Exhibit 1007
`37 C.F.R. § 42.104(c)
`
`
`
`
`On March 26, 2015, Petitioner filed, with prior authorization from the
`Board, a Motion to Correct Exhibit 1007 Pursuant to 37 C.F.R. § 42.104(c)
`in IPR2015-00161, IPR2015-00163, and IPR2015-00172. Paper 14
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`(“Mot.”).1 Petitioner accompanied the motion with three supporting
`declarations (Exhibits A–C) and a copy of the exhibit to be substituted for
`Exhibit 1007 (Exhibit D). On April 2, 2015, Patent Owner filed an
`Opposition in each case. Paper 15 (“Opp.”). For the reasons explained
`below, we grant Petitioner’s motion and afford Patent Owner an opportunity
`to file additional briefing responsive to the corrected exhibit.
`BACKGROUND
`On October 28, 2014, Petitioner filed four Petitions challenging
`
`twenty-five claims of U.S. Patent No. 7,296,121 B2 (“the ’121 patent”), each
`of which includes an asserted ground relying on JOSÉ DUATO ET AL.,
`INTERCONNECTION NETWORKS (1997) (“Duato”), along with other prior art.
`E.g., Pet. 48–50. In each of the three cases in which Petitioner filed the
`present motion, the Petition relies on chapter 4 of Duato for an asserted
`obviousness ground challenging either or both dependent claims 9 and 10 of
`the ’121 patent. Id.; IPR2015-00163 Pet. 39–41; IPR2015-00172 Pet. 52–
`55. Each of these Petitions and the supporting declaration of Robert Horst,
`Ph.D. (Ex. 1014) refer to chapter 4 of Duato and include citations to and
`quotations from pages 117 and 119 within the chapter. Pet. 49–50;
`IPR2015-00163 Pet. 40–41; IPR2015-00172 Pet. 53–55; Ex. 1014 (Decl. of
`Dr. Robert Horst) ¶¶ B-18–B-22, C-44–C-49, D-20–D-25.
`
`Duato is a book consisting of several chapters and several hundred
`pages. See Ex. 1007; Ex. D. Petitioner filed and served as Exhibit 1007
`selected portions of Duato, which totaled approximately 140 pages and
`
`1 The filings relevant to Petitioner’s motion in the three cases are identical or
`nearly identical. Therefore, we exercise our discretion to issue one order
`addressing the motions. We treat IPR2015-00161 as representative, and all
`citations are to this case unless otherwise noted.
`
`
`
`2
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`included the cover, title, and copyright page. See Ex. 1007. Exhibit 1007
`does not include chapter 4 (pages 115–174) of Duato. Id.; Ex. D.
`
`On February 13, 2015, Patent Owner, in its Preliminary Responses,
`raised the issue of Petitioner’s omission of chapter 4 of Duato from
`Exhibit 1007 as an argument supporting denial of the relevant asserted
`grounds. E.g., Prelim. Resp. 39–40; see Ex. A ¶ 7; Ex. B ¶ 6; Ex. C ¶ 6.
`Petitioner’s motion now seeks to correct Exhibit 1007 to include
`chapter 4 of Duato. Mot. 1; see Ex. D. Petitioner’s supporting declarations
`from an associate, paralegal, and legal secretary at the law firm representing
`Petitioner, who were involved in the preparation and filing of Exhibit 1007,
`explain that the omission of the chapter resulted from an accidental error—
`either in transcribing the pages of Duato to be scanned and prepared as
`Exhibit 1007 or in scanning the pages of Duato to prepare Exhibit 1007. See
`Ex. A ¶¶ 1–2, 6; Ex. B ¶¶ 1–2, 4; Ex. C ¶¶ 1–2, 5; see generally Exs. A–C.
`ANALYSIS
`The Board’s rules allow for the correction of clerical mistakes in a
`
`petition. Specifically, 37 C.F.R. § 42.104(c) provides:
`A motion may be filed that seeks to correct a clerical or
`typographical mistake in the petition. The grant of such a
`motion does not change the filing date of the petition.
`“[W]hen determining whether to grant a motion to correct a petition, the
`Board will consider any substantial substantive effect, including any effect
`on the patent owner’s ability to file a preliminary response.” Changes to
`Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method
`Patents; Final Rule, 77 Fed. Reg. 48,680, 48,699 (Aug. 14, 2012).
`
`
`
`3
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`Here, Petitioner argues the omission of chapter 4 from Exhibit 1007
`
`falls under 37 C.F.R. § 42.104(c) because it is a “clerical . . . mistake.” See
`Mot. 1–8; Ex. D. Patent Owner does not dispute this assertion. We find,
`based on the detailed and credible explanation in the three declarations
`submitted by Petitioner, that the omission of chapter 4 of Duato from Exhibit
`1007 resulted from an inadvertent mistake—either in transcribing the pages
`of Duato to be scanned and prepared as Exhibit 1007 or in scanning the
`pages of Duato to prepare Exhibit 1007. See Ex. A ¶¶ 1–2, 6; Ex. B ¶¶ 1–2,
`4; Ex. C ¶¶ 1–2, 5; see generally Exs. A–C. This accidental error in
`preparing, and therefore filing, an incomplete Exhibit 1007 is a “clerical . . .
`mistake,” subject to correction under 37 C.F.R. § 42.104(c). See, e.g.,
`Syntroleum Corp. v. Nestle Oil OYJ, Case IPR2013-00178 (Paper 21)
`(PTAB July 22, 2013) (concluding that inadvertent submission of incorrect
`exhibit was a clerical mistake under 37 C.F.R. § 42.104(c)); ABB Inc. v.
`Roy-G-Biv Corp., Case IPR2013-00063 (Paper 21) (PTAB Jan. 16, 2013)
`(same).
`
`In determining whether to grant Petitioner’s motion, we consider the
`substantive effect of allowing Petitioner to correct Exhibit 1007. Petitioner
`argues that any assertion of prejudice by Patent Owner is mitigated by Patent
`Owner’s decision to mention the omitted chapter for the first time in its
`Preliminary Responses and not to pursue available means to obtain the
`omitted chapter, for example, by asking Petitioner for the chapter or by
`obtaining a physical copy of Duato, a publicly accessible textbook, based on
`the title, author, and copyright information included in Exhibit 1007 as filed
`and served. See Mot. 8–10. Petitioner further argues that any prejudice to
`
`
`
`4
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`Patent Owner can be obviated by granting Patent Owner a reasonable
`amount of additional briefing (e.g., 3–5 pages) on chapter 4 of Duato. Id.
`Patent Owner, however, argues it had no obligation either to inform
`Petitioner of the error before filing Preliminary Responses or to obtain a
`copy of Duato. Opp. 7–8. Rather, Patent Owner asserts that Petitioner, not
`Patent Owner, has a statutory duty to notify Patent Owner of the asserted
`grounds and supporting evidence in the Petition, and allowing Petitioner to
`correct Exhibit 1007 would undermine this required notice. Id. at 4, 7–8.
`Patent Owner also contends that granting Petitioner’s motion would have a
`“substantive, prejudicial effect on Patent Owner” and its statutory right to
`address chapter 4 of Duato in its Preliminary Responses, which already have
`been filed. Id. at 4. In addition, Patent Owner argues that Petitioner’s
`proposal to allow Patent Owner additional briefing is inadequate to address
`this prejudice, because the approaching deadline for an institution decision
`in each case will not allow Patent Owner three months, the time generally
`permitted for filing a preliminary response, to respond to the relevant
`asserted ground. Id. at 4–5. Further, additional briefing would “forc[e]
`Patent Owner to incur additional effort and expense.” Id.
`
`Having considered each party’s arguments and the evidence before us,
`we determine that the circumstances warrant granting Petitioner’s motion to
`correct Exhibit 1007. As explained above, Petitioner has proffered strong
`evidence that its omission of chapter 4 of Duato from Exhibit 1007 was an
`inadvertent clerical error, resulting from Petitioner’s effort to file only
`relevant portions of Duato, a voluminous book. Other relevant facts
`minimize any potential prejudice to Patent Owner in granting Petitioner’s
`motion. For example, omitted chapter 4 of Duato relates only to Petitioner’s
`
`
`
`5
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`challenges of two dependent claims (claims 9 and 10) of the twenty-five
`claims of the ’121 patent challenged in the four Petitions filed by Petitioner.
`Further, in addressing the asserted obviousness grounds that rely on
`chapter 4 of Duato, the Petitions and supporting declaration of Dr. Horst
`include a reference to the chapter and quotations from the relevant
`discussion on pages 117 and 119—thereby giving Patent Owner notice, from
`the initial filing of each case, of Petitioner’s intent to rely on chapter 4 of
`Duato and Petitioner’s assertions regarding the relevant teachings of the
`chapter. See Pet. 49–50; IPR2015-00163 Pet. 40–41; IPR2015-00172 Pet.
`53–55; Ex. 1014 ¶¶ B-18–B-22, C-44–C-49, D-20–D-25.
`
`We recognize, however, that Patent Owner’s opportunity to address
`the asserted grounds relying on chapter 4 of Duato in its Preliminary
`Responses may have been limited by Petitioner’s clerical error in filing and
`serving an exhibit that omitted this chapter. Therefore, to obviate any
`potential prejudice to Patent Owner in allowing Petitioner to correct the
`exhibit, we afford Patent Owner an additional opportunity to address
`Petitioner’s asserted obviousness grounds that rely on chapter 4 of Duato,
`i.e., the asserted grounds challenging claim 9 over Chaiken and Duato
`(IPR2015-00161); claims 9 and 10 over Koster and Duato (IPR2015-00163);
`and claim 9 over Stanford DASH and Duato (IPR2015-00172). Each brief
`may be no more than five pages and may be filed in each case no later than
`April 27, 2015.
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Correct Exhibit 1007 in
`IPR2015-00161, IPR2015-00163, and IPR2015-00172 is granted;
`
`
`
`6
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`
`FURTHER ORDERED that Exhibit 1007 in each of these cases is
`expunged from the record;
`FURTHER ORDERED that Petitioner must file Exhibit D to the
`present motion as Corrected Exhibit 1007 in the record of each of these
`cases no later than April 13, 2015; and
`FURTHER ORDERED that Patent Owner is authorized to file, on or
`before April 27, 2015, a brief of no more than 5 pages in each case,
`addressing Petitioner’s asserted obviousness ground that relies on
`Exhibit 1007 (Duato), i.e., in IPR2015-00161, claim 9 over Chaiken and
`Duato; in IPR2015-00163, claims 9 and 10 over Koster and Duato; and in
`IPR2015-00172, claim 9 over Stanford DASH and Duato.
`
`
`
`
`
`
`7
`
`
`
`IPR2015-00161, IPR2015-00163, IPR2015-00172
`Patent 7,296,121 B2
`
`PETITIONER:
`W. Karl Renner
`Roberto J. Devoto
`FISH & RICHARDSON P.C.
`axf@fr.com
`IPR39521-0007IP2@fr.com
`PATENT OWNER:
`Jonathan D. Baker
`Bryan Atkinson
`FARNEY DANIELS PC
`jbaker@farneydaniels.com
`batkinson@farneydaniels.com
`MemoryIntegrityIPR@farneydaniels.com
`
`8
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