UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`
`
`______________________
`
`
`Case IPR2016-00984
`Patent 8,754,780
`
`_____________________
`
`
`
`MOTION TO DENY PATENT OWNER’S REQUEST FOR
`CERTIFCATE OF CORRECTION AND AMENDED PRIORITY CLAIM
`
`
`
`
`
`
`
`
`-i-
`
`Petitioner Emerson's Exhibit 1036
`Page 1 of 8
`
`
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`
`
`______________________
`
`
`Case IPR2016-00984
`Patent 8,754,780
`
`_____________________
`
`
`
`MOTION TO DENY PATENT OWNER’S REQUEST FOR
`CERTIFCATE OF CORRECTION AND AMENDED PRIORITY CLAIM
`
`
`
`
`
`
`
`
`-i-
`
`Petitioner Emerson's Exhibit 1036
`Page 1 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`Petitioner asks the Board to deny Patent Owner’s (“PO’s”) Petition to accept
`
`an Unintentionally Delayed Priority Claim and for Expedited Consideration and
`
`Request for Certificate of Correction (collectively, “the Petition”). Ex. 1022-1024.
`
`A. Standard of Review
`
`As an initial matter, the Petition must be denied because (1) it lacks the
`
`required corrected ADS, and (2) it improperly adds a new application to the ‘780
`
`patent’s incorporation-by-reference statement. See MPEP 211.02(a); Ex. 1023 at
`
`38; ‘780 Patent at 1:45-46. Further, a petition to alter a priority claim may be
`
`granted only if “the entire delay between the date the benefit claim was due under
`
`37 CFR 1.78 and the date the claim was filed was unintentional.” MPEP 211.04;
`
`37 CFR 1.78(e)(3). PO has not shown that the delay from August 3, 2013 (when
`
`the claim was due) until May 26, 2016 (when the Petition was filed) was
`
`unintentional, and the Petition must be denied. 37 CFR 1.78(d)(3)(ii).
`
`B. PO Knew the Priority Claim and did not Timely Seek Correction.
`
`Seeking to understate its erroneous priority claim, PO contends that a single,
`
`unsubstantiated “clerical error” explains “the entire delay between the issuance of
`
`the ‘780 Patent and the date the priority claim is submitted via the present
`
`Petition.” Ex. 1022 at 2, 4. But the error here is not “clerical” in nature, and
`
`instead was propagated repeatedly by the responsible attorney’s own hand. See
`
`Captioncall v. Ultratec, IPR2015-01889, Paper 54 at 4 (Aug. 1, 2016) (describing
`
`-1-
`
`Petitioner Emerson's Exhibit 1036
`Page 2 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`a clerical error as “i.e., an error performed while performing a clerical function,
`
`e.g. filing papers.”).
`
`Further, even assuming arguendo that a clerk unintentionally made a priority
`
`claim to 13/173,499 (the patented ‘499 application) rather than to 13/222,216 (the
`
`then-pending ‘216 application), PO has not even attempted to explain the delay in
`
`correcting that claim to the ‘216 application, or its failure to recognize the error.
`
`For years, the claim to the ‘499 application was repeatedly at the forefront of
`
`prosecution, with PO acknowledging the claim to the Patent Office and the Patent
`
`Office advising PO to check for errors. Yet, PO did nothing to change the
`
`incorrect claim during prosecution, and now offers no explanation for its inactivity:
`
`a. On April 2, 2013, in the original ‘780 patent application filing, PO’s attorney,
`
`Mr. Weeks, filed an ADS where he typed “Continuation of 13173499” in the
`
`first line for domestic priority, and “Patented” in the second line. No mention
`
`was made of the co-pending ‘216 application. Ex. 1026 at 2.
`
`b. On the same day, the same attorney filed an amendment to the specification.
`
`In it, he typed in bold letters a priority claim to “U.S. Patent Application No.
`
`13/173,499.” No mention was made of the ‘216 application. Ex. 1027 at 2.
`
`c. On May 17, 2013, the USPTO’s filing receipt repeated back the priority claim
`
`PO sought, stating in the first line of the review: “This application is a CON
`
`of 13/173,499…PAT 8212667.” Again, the pending ‘216 application was not
`
`-2-
`
`Petitioner Emerson's Exhibit 1036
`Page 3 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`mentioned. The USPTO even advised the Applicant to review the data and
`
`“[i]f an error is noted on this Filing Receipt, please submit a written
`
`request for a Filing Receipt Correction.” Ex. 1028 (emphasis in original).
`
`d. On July 1, 2013, the USPTO reminded the Applicant in underlined, CAPITAL
`
`letters to review the continuation claim on the ADS because it was relevant to
`
`the kind of examination that would be performed. Ex. 1029 at 3, ¶3.
`
`e. On June 17, 2014, the ‘780 patent issued. On that same day, the same
`
`attorney filed a child application No. 14/306,412 (the ‘412 application)
`
`claiming priority to the ‘780 Patent and its chain. The attorney, Mr. Weeks,
`
`completed and filed an ADS that listed the priority claim to the ‘499
`
`application, again with no priority claim to the ‘216 application. Ex. 1030 at
`
`2-3. Critically, that ADS laid out the ‘780 Patent (“Application Number
`
`13/855452”) filing date as “2013-04-02” and asserted it to be a “Continuation
`
`of 13/173499” with an “Issue Date” of “2012-07-03,” i.e., without any co-
`
`pendency. The break in co-pendency was conspicuous and written out by the
`
`attorney’s own hand. This is not an error that was “clerical” in nature.
`
`f. On June 17, 2014, the child ‘412 specification listed itself as “a continuation
`
`of [the ‘780 Patent]…, which is a continuation of [the ‘499 application”]. No
`
`mention was made of the ‘216 application. Ex. 1031.
`
`g. The day after the child ‘412 application was filed, the Applicant filed an IDS
`
`-3-
`
`Petitioner Emerson's Exhibit 1036
`Page 4 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`stating that it was “a continuation of [the ‘780 Patent], which is a continuation
`
`of [the ‘499 application].” Ex. 1032 at 1. This originally drafted statement of
`
`priority made no mention of the ‘216 application.
`
`h. On June 27, 2014, the Applicant received a Filing Receipt in the child ‘412
`
`application listing the ‘499 application and not the ‘216 application in the
`
`priority chain. Again, the USPTO advised the Applicant in bold letters to
`
`review the claim and correct it if necessary. Ex. 1033.
`
`Over and over, PO articulated a priority claim to the ‘499 application and
`
`not to the ‘216 application, and was reminded of that claim. Each time, PO did not
`
`change it. The repeated nature of this error is not clerical, as PO contends.
`
`C. There is no Excuse for the Month Long Delay from the Inter Partes
`Request until PO Filed the Petition.
`
`PO plainly cannot contend that it did not know of its priority claim after
`
`April 29, 2016, when the present petition for Inter Partes Review was both filed
`
`and served. Yet, PO continued its intentional delay for nearly a month thereafter
`
`without explanation. Not until May 26, 2016 did PO finally file the Petition.1
`
`Because the governing regulation provides that the “entire” delay must be
`
`
`1 PO delayed another two weeks before filing a similar request in a further child
`
`application (the ‘412 application), again asserting that even every day of that extra
`
`two week delay was also “unintentional.” Ex. 1034 at 2.
`
`-4-
`
`Petitioner Emerson's Exhibit 1036
`Page 5 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`unintentional, a party does not meet the standard even where it intentionally delays
`
`“for even a few weeks.” New York University v. Autodesk, Inc., 495 F. Supp.2d
`
`369, n.4 (S.D.N.Y. 2007).
`
`D. PO’s Misuse of the Petitions Branch and Covert Behavior Evidences
`Intent to Delay
`
`Contrary to the rules, PO did not notify either the Board or Petitioner before
`
`it filed the Petition. See Paper 10 at 2; Alarm.com Inc. v. Vivant (Ex. 1025) at 5-6.
`
`PO was acting behind-the-scenes to change the priority claim before having to
`
`respond to the petition for Inter Partes review, and even requested expedited
`
`handling for this purpose. See Ex. 1022 at 2-3. Such conduct evidences PO’s
`
`desire for a superficial review of the Petition without any sworn testimony to
`
`substantiate PO’s claim of unintentional delay.
`
`E. Granting PO’s Petition would Prejudice Petitioner
`
`Finally, Petitioner is prejudiced by the assertion of an overtly invalid patent
`
`against its products. Additionally, Petitioner dedicated 20% (12 pages) of its
`
`petition for IPR on invalidity of the ‘780 due to PO’s own prior art. See Paper 1 at
`
`20-32. Allowing PO to administratively cleanse the ‘780 patent now would
`
`prejudicially deprive Petitioner of argument space that cannot be recovered.
`
`F. Conclusion
`
`PO’s averments of “unintentional” delay are not supported by any evidence,
`
`and are not credible. Petitioner requests that the Board deny the Petition.
`
`-5-
`
`Petitioner Emerson's Exhibit 1036
`Page 6 of 8
`
`
`
`Patent No. 8,754,780 Motion to Deny Cert. of Corr. and Amended Priority Claim
`
`
`Dated: August 5, 2016
`
`Respectfully submitted,
`
`/s/ Donald L. Jackson
`Donald L. Jackson (Reg. No. 41,090)
`Counsel for Petitioner
`
`-6-
`
`Petitioner Emerson's Exhibit 1036
`Page 7 of 8
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Motion together
`
`with all exhibits has been electronically served on PO’s attorneys via Federal
`
`Express overnight delivery on the 5th day of August, 2016 at the following
`
`addresses:
`
`Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`James E. Schutz
`Troutman Sanders LLP
`600 Peachtree St., Suite 5200
`Atlanta, GA 30308
`Phone: 404.885.3498
`Email: james.schutz@troutmansanders.com
`
`
`Respectfully submitted,
`
`/s/ Donald L. Jackson
`Donald L. Jackson
`Registration No. 41,090
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`Petitioner Emerson's Exhibit 1036
`Page 8 of 8
`
`
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
