Trials@uspto.gov
`571-272-7822
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` Paper 15
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`
` Entered: March 2, 2017
`
`
`
`Before TREVOR M. JEFFERSON and JOHN A. HUDALLA,
`Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding and Motion to Correct Petition
`37 C.F.R. §§ 42.5 and 42.104(c)
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`____________
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 15
`
`
` Entered: March 2, 2017
`
`
`
`Before TREVOR M. JEFFERSON and JOHN A. HUDALLA,
`Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding and Motion to Correct Petition
`37 C.F.R. §§ 42.5 and 42.104(c)
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`____________
`
`
`
`
`
`IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`
`
`A. Background
`The Board held a conference call on Friday, February 24, 2017, at
`approximately 1:00 p.m. between counsel for Petitioner, Apple Inc., and
`counsel for Patent Owner, California Institute of Technology, and Judges
`Jefferson and Hudalla. Petitioner sought the conference to request leave to
`file corrected exhibits in IPR2017-00210 (“IPR’210”), IPR2017-00211
`(“IPR-211”), and IPR2017-00219 (“IPR-219”).1 Patent Owner opposed
`Petitioner’s request.
`In each of these IPRs, Petitioner sought to file three corrected
`exhibits, asserting that a clerical error caused incorrect exhibits to be filed in
`each IPR. Noting that the Petitioner was not time-barred from refiling the
`Petitions in each of the IPRs, Petitioner sought to file corrected exhibit
`copies in each case. Patent Owner objected to the timing of Petitioner’s
`request, given that Patent Owner Preliminary Response is currently due on
`March 1, 2017. Patent Owner also objected to the characterization of
`Petitioner’s exhibit filings as clerical mistakes.
`In light of the timing involving multiple IPRs with similar exhibits,
`we authorized Petitioner to file a motion pursuant to 37 C.F.R. § 42.104(c)
`addressing the clerical error correction of the three exhibits by Tuesday,
`
`
`1 Petitioner also sought leave to file the three corrected exhibits at issue in
`IPR-210, IPR-211, and IPR-219 in five additional IPRs; namely, IPR2017-
`00297, IPR2017-00423, IPR2017-00700, IPR2017-00701, and IPR2017-
`00728.
`
`2
`
`
`
`
`
`IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`
`February 28, 2017.2 We also directed Petitioner to confer with Patent
`Owner to determine whether the motion would be opposed. We further
`discussed with the parties that up to a one-month extension of time for filing
`Patent Owner’s Preliminary Response would be considered in the IPR-210,
`IPR-211, and IPR-219. No additional time extensions were discussed or
`authorized in the present cases or other related IPRs.
`Pursuant to our authorization, Petitioner filed an “Unopposed Motion
`to Submit Replacement Exhibits Pursuant to 37 C.F.R. § 42.104(c)” in
`IPR2017-00210, IPR2017-00211, and IPR2017-00219. Paper 13 (IPR-210);
`Paper 12 (IPR-211); Paper 12 (IPR-219). The motion indicates that Patent
`Owner does not oppose the relief requested by Petitioner but does not
`acquiesce to any of Petitioner’s factual assertions. Paper 13, 7 (IPR-210),
`Paper 12, 7 (IPR-211), Paper 12, 7 (IPR-219). Petitioner also filed copies of
`the corrected exhibits it seeks to submit in each case as appendices to each
`motion. Id.
`
`B. Motion to Correct Exhibits
`The Board’s rules allow for the correction of certain clerical mistakes:
`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.
`
`
`2 During the conference, the Board also authorized Petitioner to file a motion
`pursuant to 37 C.F.R. § 42.104(c) in the five additional IPRs (IPR2017-
`00297, IPR2017-00423, IPR2017-00700, IPR2017-00701, and IPR2017-
`00728) by Friday, March 3, 2017.
`
`3
`
`
`
`
`
`IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`
`37 C.F.R. § 42.104(c). Our cases have noted that § 42.104(c) is remedial in
`nature and entitled to a liberal interpretation. See ABB Inc. v. ROY-G-BIV
`Corp., IPR2013-00063, slip op. at 7 (PTAB Jan. 16, 2013) (Paper 21);
`Syntroleum Corp. v. Neste Oil OYJ, IPR2013-00178, slip op. at 5 (PTAB
`July 22, 2013) (Paper 21); Owens Corning v. Certainteed Corp., IPR2014-
`01397, slip op. at 2 (PTAB Dec. 17, 2014) (Paper 10).
`In the present cases, based on our review of the facts set forth in the
`supporting declarations and Petitioner’s unopposed motion, we determine
`that Petitioner has met its burden of establishing that a clerical error led to
`the filing of incorrect exhibits in IPR-210 (Ex. 1002, Ex. 1003, and
`Ex. 1020; IPR-211 (Ex. 1102, Ex. 1103, and Ex. 1120); and IPR-219 (Ex.
`1202, Ex. 1203, and Ex. 1220). Paper 13 (IPR-210); Paper 12 (IPR-211);
`Paper 12 (IPR-219). Accordingly, we grant Petitioner’s request to replace
`the identified exhibits in IPR-210, IPR-211, and IPR-219.
`
`C. Conduct of Proceeding
`Patent Owner’s Preliminary Response in IPR-210, IPR-211, and IPR-
`219 is currently due March 1, 2017. During the conference with the parties,
`the Board indicated that up to a one-month extension of time for filing the
`Preliminary Response would be considered should the Board grant
`Petitioner’s motion to correct exhibits at this late juncture. Petitioner noted
`that it does not oppose a one-month extension to April 3, 2017, for the filing
`of the Patent Owner’s Preliminary Response under these circumstances.
`Paper 13 (IPR-210); Paper 12 (IPR-211); Paper 12 (IPR-219).
`
`4
`
`
`
`
`
`IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`
`
`In light of the substitute exhibits in IPR-210, IPR-211, and IPR-219,
`we grant Patent Owner a one-month extension to file its Patent Owner’s
`Responses in IPR-210, IPR-211, and IPR-219. See 37 C.F.R. § 42.5(c).
`These filings are now due on or before April 3, 2017.
`ORDER
`
`It is, therefore,
`ORDERED that Petitioner’s Motion to Submit Replacement Exhibits
`Pursuant to 37 C.F.R. § 42.104(c) is granted; and
`FURTHER ORDERED that Petitioner shall file the corrected exhibits
`in IPR2017-00210 (Ex. 1002, Ex. 1003, and Ex. 1020); IPR2017-00211
`(Ex. 1102, Ex. 1103, and Ex. 1120); and IPR2017-00219 (Ex. 1202,
`Ex. 1203, and Ex. 1220) and note that the exhibits are replacement or
`corrected in the filing metadata where applicable; and
`FURTHER ORDERED that the due date for Patent Owner’s
`Preliminary Responses in IPR2017-00210, IPR2017-00211, and IPR2017-
`00219 is extended to April 3, 2017.
`
`
`
`5
`
`
`
`
`
`IPR2017-00210 (Patent 7,116,710 B1)
`IPR2017-00211 (Patent 7,116,710 B1)
`IPR2017-00219 (Patent 7,116,710 B1)
`
`For PETITIONER:
`
`Richard Goldenberg
`richard.goldenberg@wilmerhale.com
`Brian M. Seeve
`brian.seeve@wilmerhale.com
`Dominic E. Massa
`dominic.massa@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`
`
`
`For PATENT OWNER:
`
`Michael T. Rosato
`mrosato@wsgr.com
`Matthew A. Argenti
`margenti@wsgr.com
`Richard Torczon
`rtorczon@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`
`Todd M. Briggs
`toddbriggs@quinnemanuel.com
`Kevin P.B. Johnson
`kevinjohnson@quinnemanuel.com
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`
`
`6
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