UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`RUBICON COMMUNICATIONS, LP
`
`Petitioner,
`
`
`
`v.
`
`
`
`LEGO A/S
`
`Patent Owner.
`
`________________________
`
`Case IPR2016-01187
`
`Patent 8,894,066
`
`
`
`PETITIONER’S MOTION TO CORRECT
`CLERICAL MISTAKE UNDER 37 CFR §42.104(C)
`
`
`
`1
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`RUBICON COMMUNICATIONS, LP
`
`Petitioner,
`
`
`
`v.
`
`
`
`LEGO A/S
`
`Patent Owner.
`
`________________________
`
`Case IPR2016-01187
`
`Patent 8,894,066
`
`
`
`PETITIONER’S MOTION TO CORRECT
`CLERICAL MISTAKE UNDER 37 CFR §42.104(C)
`
`
`
`1
`
`
`
`
`
`
`
`Petitioner Rubicon Communications, LP (“Rubicon”) moves to correct a
`
`clerical mistake pursuant to 37 C.F.R. § 42.104(c) that resulted in the inadvertent
`
`omission of Smallworks LLC as a real-party-in interest. The Board authorized
`
`this motion in correspondence dated November 16, 2016.
`
`
`
`This motion is accompanied by a declaration of the attorney who drafted the
`
`petition (“Thompson Decl.” (Ex. 1023) and a letter from Petitioner’s counsel to
`
`Patent Owner’s Counsel on June 27, 2016 (“Beard letter”) (Ex. 2010).
`
`
`
`I. Applicable Rules and Law
`
`37 CFR §42.104 states in part:
`
`In addition to the requirements of §§ 42.6, 42.8, 42.22, and
`42.24, the petition must set forth:
`(a) Grounds for standing. The petitioner must certify that the
`patent for which review is sought is available for inter partes review
`and that the petitioner is not barred or estopped from requesting an
`inter partes review challenging the patent claims on the grounds
`identified in the petition.
`(b) Identification of challenge. Provide a statement of the precise
`relief requested for each claim challenged. The statement must identify
`the following:
`(1) The claim;
`(2) The specific statutory grounds under 35 U.S.C. 102 or 103
`on which the challenge to the claim is based and the patents or printed
`publications relied upon for each ground;
`
`2
`
`
`
`(3) How the challenged claim is to be construed. Where the
`claim to be construed contains a means-plus-function or step-plus-
`function
`limitation as permitted under 35 U.S.C. 112(f),
`the
`construction of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts corresponding
`to each claimed function;
`(4) How the construed claim is unpatentable under the statutory
`grounds identified in paragraph (b)(2) of this section. The petition must
`specify where each element of the claim is found in the prior art
`patents or printed publications relied upon; and
`(5) The exhibit number of the supporting evidence relied upon to
`support the challenge and the relevance of the evidence to the
`challenge raised, including identifying specific portions of the
`evidence that support the challenge. The Board may exclude or give no
`weight to the evidence where a party has failed to state its relevance or
`to identify specific portions of the evidence that support the challenge.
`…
`
`Regarding correction of a mistake, 37 CFR §42.104 states:
`
`(c) 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.
`
`37 CFR §42.5 states in part:
`
`(a) The Board may determine a proper course of conduct in a
`proceeding for any situation not specifically covered by this part and
`may enter non-final orders to administer the proceeding.
`(b) The Board may waive or suspend a requirement of parts 1,
`41, and 42 and may place conditions on the waiver or suspension.
`(c) Times.
`(1) Setting times. The Board may set times by order.
`Times set by rule are default and may be modified by order. Any
`
`3
`
`
`
`take any applicable statutory
`
`times will
`modification of
`pendency goal into account.
`(2) Extension of time. A request for an extension of time
`must be supported by a showing of good cause.
`(3) Late action. A late action will be excused on a
`showing of good cause or upon a Board decision that
`consideration on the merits would be in the interests of justice.
`…
`
`35 U.S.C. § 312(a) states:
`
`
`A petition filed under section 311 may be considered only if-
`(1) the petition is accompanied by payment of the fee established by
`the Director under section 311;
`(2) the petition identifies all real parties in interest;
`(3) the petition identifies, in writing and with particularity, each claim
`challenged, the grounds on which the challenge to each claim is based, and
`the evidence that supports the grounds for the challenge to each claim,
`including-
`(A) copies of patents and printed publications that the petitioner relies
`upon in support of the petition; and
`(B) affidavits or declarations of supporting evidence and opinions, if
`the petitioner relies on expert opinions;
`(4) the petition provides such other information as the Director may
`require by regulation; and
`(5) the petitioner provides copies of any of the documents required
`under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the
`designated representative of the patent owner.
`
`Section 312(a) sets forth requirements that must be satisfied for the Board to
`
`give consideration to a petition; however, a lapse in compliance with those
`
`requirements does not deprive the Board of jurisdiction over the proceeding, or
`
`preclude the Board from permitting such lapse to be rectified. Lumentum
`
`4
`
`
`
`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (PTAB March 4, 2016)
`
`(Paper 38, page 5). In addition, jurisdiction is not lost merely because a petition
`
`does not identify “all real parties in interest,” as required by§312(a)(2). See id.
`
`
`
`II. Statement of Material Facts
`
`1. The petition seeks inter partes review of claims 1-8 of U.S. Patent No.
`
`8,894,066 (the “‘066 Patent”).
`
`2. On May 29, 2015, prior to the filing of the petition, Patent Owner sued
`
`Petitioner Rubicon Communications LP in the U.S. District Court, District of
`
`Connecticut, Civil Action No. 3:15-cv-00823 (the “Lawsuit”), alleging that
`
`Petitioner Rubicon Communications, LP infringes on claims of the ‘066 Patent
`
`(Thompson Decl., Para. 4). The Patent Owner subsequently sought leave of court
`
`in order to amend its complaint to add Smallworks LLC as a named defendant
`
`(Thompson Decl., Para. 4).
`
`3. The law firm of Meyertons Hood Kivlin Kowert & Goetzel, P.C.
`
`represents Rubicon Communications LP and Smallworks LLC in the Lawsuit as
`
`well as in this matter.
`
`4. Counsel for Patent Owner in this proceeding represents Patent Owner in
`
`the Lawsuit as well.
`
`5
`
`
`
`5. Chris Thompson drafted the petition on behalf of Petitioner (Thompson
`
`Decl., Para. 3). Mr. Thompson had limited involvement with the Lawsuit prior to
`
`drafting the current petition, consisting of working on invalidity contentions
`
`(Thompson Decl., Para. 4). In drafting the petition, Mr. Thompson reviewed the
`
`original complaint filed by Patent Owner in the Lawsuit, which identified only
`
`Rubicon Communications LP d/b/a Smallworks as a defendant (Thompson Decl.,
`
`Para. 4).
`
`6. Specifically, when preparing Section I.A. of the petition, Mr. Thompson
`
`made reference to the style of Patent Owner’s original complaint in the Lawsuit,
`
`which identified only Rubicon Communications LP as defendant, and because of
`
`this clerical mistake, the name of Smallworks LLC was inadvertently omitted from
`
`Section I.A. of the petition (Thompson Decl., Para. 5).
`
`7. In Section I.B of the Mandatory Notices, however, the Lawsuit was
`
`identified as a
`
`related matter, and “Smallworks, LLC” and “Rubicon
`
`Communication LP dba Smallworks” were identified as parties adverse to Patent
`
`Owner.
`
`8. The omission of Smallworks LLC from the list of real parties in interest
`
`was inadvertent and was in no way intended to hide the identity of Smallworks
`
`LLC from Patent Owner (Thompson Decl., Para. 5). In fact, Patent Owner was
`
`aware of the identity of Smallworks LLC by virtue of Patent Owner’s own request
`
`6
`
`
`
`for leave to amend its complaint in the Lawsuit that Patent Owner filed in October
`
`2015. Since Patent Owner specifically named Smallworks LLC as a defendant in
`
`its Lawsuit, Patent Owner had actual knowledge of the identity of Smallworks
`
`LLC, and in no way was prejudiced by the inadvertent omission of a name
`
`previously known to Patent Owner. This is further buttressed by the fact that
`
`counsel for Patent Owner and Smallworks LLC discussed the corporate
`
`relationship of the parties numerous times by phone, and Patent Owner received
`
`from Smallworks LLC discovery in the litigation regarding Smallworks LLC and
`
`its corporate structure.
`
`9. On June 10, 2016, the petition was filed electronically via the Patent
`
`Review Processing System and served on Patent Owner counsel via Federal
`
`Express, first overnight delivery. The petition fee was paid electronically on the
`
`same date. The petition was accorded a filing date of June 10, 2016.
`
` 10. After the petition was filed, Petitioner’s counsel became aware that
`
`Smallworks LLC had been mistakenly omitted from the list of real parties in
`
`interest in the petition (Thompson Decl., Para. 6). On June 27, 2016, Petitioner’s
`
`counsel sent a letter to Patent Owner’s counsel notifying Patent Owner’s counsel
`
`of the clerical error in omitting Smallworks LLC, and asking whether Patent
`
`Owner would oppose a motion to correct the clerical error (Exhibit 2010). Patent
`
`7
`
`
`
`Owner’s counsel responded that it would oppose such a motion (Thompson Decl.,
`
`Para. 6).
`
`11. On July 20, 2016, Petitioner submitted a written request to the Board for
`
`authorization to file this motion to correct under 37 CFR § 42.104(c), stating that a
`
`real party in interest had been omitted from the original petition due to a clerical
`
`mistake (Exhibit 2002).
`
`
`
`III. Precise Relief Requested
`
`
`
`By this motion, Petitioner requests that it be allowed to file a corrected
`
`petition listing Smallworks LLC as a real-party-in-interest.
`
`
`
`IV. Discussion
`
`
`
`37 C.F.R. §42.104(a) and (b) set forth requirements for a petition. 37 C.F.R.
`
`§ 42.104(c) provides that a petitioner may file a motion that seeks to correct a
`
`clerical or typographical mistake in a petition, and the grant of such a motion does
`
`not change the filing date of the petition. “The term ‘clerical…mistake’ in 37
`
`C.F.R. § 42.104(c) is construed broadly….” Coleman Cable, LLC et al. v. Simon
`
`Nicholas Richmond, IPR2014-0935 (PTAB August 28, 2014) (Paper 12, page 2)
`
`(Board granted motion to correct inadvertent omission of three parties from the
`
`8
`
`
`
`petition. Petitioner filed four petitions simultaneously and inadvertently omitted
`
`some of the petitioners in one of the four).
`
`“Smallworks LLC” was omitted from the petition due to a clerical mistake.
`
`Counsel who prepared
`
`the petition, Mr. Chris Thompson, had minimal
`
`involvement with
`
`the Lawsuit filed by Patent Owner against Rubicon
`
`Communications LP in May 2015, limited to working on invalidity contentions.
`
`As such, Mr. Thompson did not have direct knowledge that in October 2015,
`
`Patent Owner sought to amend the complaint to add Smallworks LLC as a named
`
`defendant. In preparing the current petition, Mr. Thompson reviewed the original
`
`complaint filed by Patent Owner, thereby mistakenly overlooking the fact that
`
`Smallworks LLC was a named defendant by virtue of Patent Owner’s amendment
`
`in the Lawsuit. This resulted in the clerical or typographical mistake of not
`
`including Smallworks LLC in the listing of the real-parties-in-interest in Section
`
`I.A (Thompson Decl. 5). In the very next paragraph in the Mandatory Notices,
`
`however, Smallworks LLC was identified in the style of the Lawsuit as a party
`
`adverse to Patent Owner. Thus, Petitioner had no intention or reason to hide the
`
`identity of Smallworks LLC from the Board or Patent Owner, since Patent Owner
`
`was already aware of Smallworks LLC by virtue of its own pleadings in the
`
`Lawsuit.
`
`9
`
`
`
` As the Board noted in the Lumentum decision, a lapse in compliance with
`
`the requirements of Section 312(a) does not preclude the Board from permitting
`
`such lapse to be rectified. Lumentum at p. 5. Also, under 37 CFR § 42.5, the
`
`Board may determine a proper course of conduct in a proceeding for any situation
`
`not specifically covered under the Rules, or waive or suspend a requirement of
`
`parts 1, 41, and 42 (with or without conditions). Id.
`
`The purpose of the rules is to prevent a party who is a real party in interest
`
`from hiding itself from the patent owner and the Board, yet be involved in the inter
`
`partes reexamination. In this case, Patent Owner was not surprised, disadvantaged
`
`or prejudiced in any way by the omission of Smallworks LLC from the list of real-
`
`parties-in-interest in the original petition and there was no intent for Smallworks,
`
`LLC to hide itself from the Board or the Patent Owner. Patent Owner knew of –
`
`and had even sued – Smallworks LLC at the time the petition was filed. In
`
`addition, Petitioner notified Patent Owner that Smallworks LLC had been
`
`inadvertently omitted from the list of real-parties-in-interest almost three (3)
`
`months before Patent Owner filed its preliminary response. As such, the omission
`
`from the listing of real-parties-in-interest had no effect on Patent Owner’s ability to
`
`prepare its Preliminary Response. Further, the clerical or typographical mistake
`
`was due to Mr. Thompson’s minimal involvement in the underlying Lawsuit, and
`
`his review of the original complaint filed by Patent Owner rather than the more
`
`10
`
`
`
`recent amendment by Patent Owner. No harm will come to Patent Owner if the
`
`correction is allowed, whereas the harm to Petitioner would be immediate if the
`
`correction is not allowed. As a result, in balancing the equities involved,
`
`correction of the clerical or typographical mistake will further the interests of
`
`justice, particularly in the absence of any surprise, disadvantage or prejudice to
`
`Patent Owner.
`
`
`
`For the reasons stated herein, Petitioner respectfully requests that Petitioner
`
`be allowed to file a corrected petition listing Smallworks LLC as a real-party-in-
`
`interest.
`
`Date: November 28, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`Respectfully submitted,
`
` /Chris D. Thompson/
`Eric B. Meyertons
`Registration No. 34876
`emeyertons@intprop.com
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8888
`
`Chris D. Thompson
`Registration No. 43188
`cthompson@intprop.com
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`
`
`
`
`
`
`
`
`
`
`
`
`
`(512) 853-8877
`
`Ryan T. Beard (pro hac vice)
`rbeard@intprop.com
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8833
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
`
`Certificate of Service
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that completed and
`
`entire copies of the Motion to Correct Clerical Mistake were served on the
`
`following counsel of record via Federal Express on November 28, 2016.
`
`Howard Grossman
`7 Times Square
`New York, NY 10036
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Chris D. Thompson/
`Chris D. Thompson
`Registration No. 43,188
`cthompson@intprop.com
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8877
`
`
`
`
`
`13
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
