Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 34
`Entered: November 22, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00216
`Patent 8,013,732 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 34
`Entered: November 22, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00216
`Patent 8,013,732 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-00216
`Patent 8,013,732 B2
`
`
`As authorized by our Order (Paper 13), Patent Owner SIPCO, LLC,
`filed a Motion for Authorization to File a Certificate of Correction (Paper
`14, “Motion”). Petitioner filed a Response in Opposition (Paper 17,
`“Resp.”) and Patent Owner filed a Reply in Support of its Motion (Paper 18,
`“Reply”). By its Motion, Patent Owner seeks authorization to correct what
`it purports to be a series of mistakes in the priority claim recited on the face
`of U.S. Patent No. 8,013,732 B2 (Ex. 1001, “the ’732 patent”). Patent
`Owner provides the following marked-up version of the priority claim to
`indicate the corrections it plans to seek.
`. . . Pat. No. 6,437,692, which is a continuation-in-part of
`application No. 09/271,517, filed on Mar. 18, 1999, now
`abandoned, which is and a continuation-in-part of application
`No. 09/102,178, filed on Jun. 22, 1998, now Pat. No. 6,430,268,
`which is and a continuation-in-part of application No.
`09/412,895, filed on Oct. 5, 1999, now Pat. No. 6,218,953,
`which is and a continuation-in-part of application No.
`09/172,554, filed on Oct. 14, 1998, now Pat. No. 6,208,522
`Mot. 1. Patent Owner asserts that this requested “correction accurately
`reflects what PO told the Office in the application data sheet submitted with
`the ‘732 patent (Ex. 2006, 3).” Id. Patent Owner has filed similar motions
`in two other related cases, IPR2017-00001, Paper 16 and IPR2017-00359,
`Paper 12. The parties agree that the proposed corrections would not impact
`the proceeding before us in this matter. Resp. 6, Reply 2.
`Petitioner urges us to deny this relief, in part because “the PTO
`correctly printed the front cover and specification of the ‘732 patent. No
`PTO mistake exists.” Resp. 1. Petitioner asserts that the “as-filed
`specification and ADS (and Bibliographic Data Sheet prepared based on the
`ADS) had inconsistent priority claims” and that the Office resolved that
`ambiguity in favor of the as-filed specification. Id. As such, Petitioner
`
`2
`
`
`
`IPR2017-00216
`Patent 8,013,732 B2
`
`contends that Patent Owner is not now allowed to reject that resolution and
`choice to rely on the priority claim as recited in the ADS. Id. Petitioner also
`points out a number of inconsistencies and a lack of diligence that it argues
`should prevent Patent Owner from being allowed to make its requested
`correction. Id. at 2–6. The question before us, however, is not whether
`Patent Owner is entitled to a certificate of correction. We, instead, are
`tasked with determining whether to allow Patent Owner to file a request for
`a certificate of correction. The Petitions Branch is charged with reviewing
`any such request.
`Petitioner also asserts that any attempt to modify the priority claim of
`the ’732 patent would impact other proceedings before the Board and district
`court proceedings. Id. at 6–7. According to Petitioner, “[m]odifying the
`’732 patent’s priority claim is a necessary first step in attempting to bring
`consistency to the priority claims of the ’780 patent, the ’582 patent, the
`’692 patent, the ’661 patent, and the ’492 patent” and these patents, with the
`exception of the ’582, are all at issue in other proceedings. Id. at 7. Patent
`Owner responds that “[c]orrecting a priority claim always has the potential
`to affect the validity of a patent, but such corrections are not precluded by
`pending litigation.” Reply 1. We agree with Patent Owner and as such, we
`are not persuaded that the potential interactions with the other proceedings
`should bar the Patent Owner from being able to seek a certificate of
`correction as to this patent.
`Petitioner further contends that the modification sought here is a
`prerequisite to seeking a modified priority claim for U.S. Patent No.
`8,754,780 (the “’780 patent”). Resp. 5–6. The ’780 patent was the subject
`of IPR2016-00984. In that matter, a panel of the Board denied Patent
`
`3
`
`
`
`IPR2017-00216
`Patent 8,013,732 B2
`
`Owner’s Third Request for a Certificate of Correction and Petition to Accept
`an Unintentionally Delayed Priority Claim. IPR2016-00984, Paper 31.
`Petitioner asserts that this request lays the groundwork to modifying the
`priority of the ’780 patent and any such modification would be in
`contravention to the Board’s Orders in IPR2016-00984. Resp. 2, 6. A Final
`Decision was issued in that case on October 25, 2017. IPR2016-00984,
`Paper 43. In that Final Decision, the Board lifted the prohibitions as to
`Patent Owner’s ability to seek correction of the ’780 Patent. IPR2016-
`00984, Paper 43 at 62. Thus, there is no issue with possible contravention of
`an order in IPR2016-00984.
`We are persuaded that Patent Owner should be permitted to file a
`request to seek a certificate of correction of the ’732 patent. We defer to the
`judgment of the Petitions Branch of the Office with respect to whether any
`such request should be granted.
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a request for a
`certificate of correction for the ’732 patent and, alternatively, to petition for
`a delayed priority claim and certificate of correction for a mistake by the
`applicant.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00216
`Patent 8,013,732 B2
`
`PETITIONER:
`Steven Pepe
`James R. Batchelder
`James L. Davis, Jr.
`Kathryn N. Hong
`Daniel Richards
`ROPES & GRAY LLP
`steven.pepe@ropesgray.com
`james.batchelder@ropesgray.com
`james.l.davis@ropesgray.com
`kathryn.hong@ropesgray.com
`daniel.richards@ropesgray.com
`
`
`PATENT OWNER:
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Thomas F. Meagher
`MEAGHER EMANUEL LAKS GOLDBERG & LIAO, LLP
`tmeagher@meagheremanuel.com
`
`
`5
`
`
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