Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`Paper No. 10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00067
`U.S. Patent No. 8,577,813
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO FILE A CORRECTED PETITION UNDER 37 C.F.R. § 42.104(c)
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`U.S. Patent No. 8,577,813
`Paper No. 10
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00067
`U.S. Patent No. 8,577,813
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO FILE A CORRECTED PETITION UNDER 37 C.F.R. § 42.104(c)
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`
`
`
`
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`
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`TABLE OF CONTENTS
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`Page
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`I.
`
`II.
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`III.
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`INTRODUCTION ........................................................................................... 1
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`PETITIONER SEEKS TO ALTER THE GROUNDS OF THE
`PETITION, NOT TO CORRECT MERE CLERICAL ERRORS .................. 1
`
`PTAB DECISIONS AND LEGISLATIVE HISTORY SUPPORT
`DENIAL OF PETITIONER’S MOTION ....................................................... 4
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`IV. PETITIONER’S PROPOSED SUBSTANTIVE CHANGES, IF
`ALLOWED, WILL PREJUDICE PATENT OWNER ................................... 6
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`V.
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`CONCLUSION ................................................................................................ 7
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`
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`i
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`
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`TABLE OF AUTHORITIES
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`Cases
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`Page(s)
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`Amkor Tech., Inc. v. Tessera, Inc.,
`IPR2013-00242, Paper 32 (Aug. 29, 2013). ......................................................4, 5
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`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-01149, Paper 31 (May 19, 2015). .......................................................2, 5
`
`Ford Motor Co. v. United States,
`157 F.3d 849 (Fed. Cir. 1988) ................................................................................ 3
`
`HBPSI – Hong Kong Ltd. v. Sram, LLC,
`IPR2013-00174, Paper 10 (Oct. 3, 2016). ............................................................. 3
`
`Int’l Bus. Mach. Corp. v. Intellectual Ventures II LLC,
`IPR2014-00660, Paper 17 (July 31, 2014). ........................................................... 7
`
`Merck Sharp & Dohme Corp., v. Ono Pharmaceutical Co., Ltd.,
`IPR2016-01217, Paper 10 (Oct. 3, 2016). .........................................................4, 5
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`TD Bank, N.A. v. Global Session Holdings SRL,
`IPR2014-013591 et al., Paper 11 (Dec. 22, 2014). ................................................ 6
`
`Zhongshan Broad Ocean Motor Co., Ltd. v. NIDEC Motor Corp.,
`IPR2014-01122, Paper 20 (Jan. 21, 2015). ................................................... 1, 3, 4
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`
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`Statutory Authorities
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`35 U.S.C. § 314(b) ..................................................................................................... 7
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`
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`Rules and Regulations
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`37 C.F.R. § 42.104(c) .................................................................................... 1, 3, 5, 7
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`ii
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`Legislative Materials
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012). ..................................................................... 6
`
`Changes to Implement IPR Proceedings, PGR Proceedings, and Transitional
`Program for CBM Patents; Final Rule,
`77 Fed. Reg. 48680 (Aug. 14, 2012). ..................................................................... 5
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`iii
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`I.
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`INTRODUCTION
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`37 C.F.R. § 42.104(c) allows for corrections of only “clerical or
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`typographical” errors without affecting the petition’s filing date. As this Board has
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`held, an error is not clerical or typographical merely because it was inadvertent. The
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`error United Patents Inc. (“UP”) seeks to correct here—even if unintentional—is a
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`substantive and prejudicial error lacking any of the hallmarks of a “clerical or
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`typographical” error: It affects the very ground of invalidity being asserted against
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`four claims; it is integrated throughout UP’s original submission (and thus is not
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`merely a “cut and paste” error); it was reviewed multiple times over nearly two
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`weeks and approved by lead counsel; and Patent Owner (“PO”) reasonably relied—
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`to its prejudice—on the error in preparing its Preliminary Response before UP
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`sought to correct its error. Precedent and the legislative history are clear that such
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`substantive errors cannot be excused under 37 C.F.R. § 42.104(c); rather, they can
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`only be corrected in a new petition. The Board should deny UP’s motion.
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`II.
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`PETITIONER SEEKS TO ALTER THE GROUNDS OF THE
`PETITION, NOT TO CORRECT MERE CLERICAL ERRORS
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`37 C.F.R. § 42.104(c) permits a petitioner to file a motion to correct “a clerical
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`or typographical mistake in the petition” without affecting the petition’s filing date.
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`“The standard for excusing a filing error under 37 C.F.R. § 42.104(c) is not mere
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`unintentionality or inadvertence, but instead requires a showing that a ‘clerical or
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`typographical mistake’ occurred.” Zhongshan Broad Ocean Motor Co., Ltd. v.
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`1
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`U.S. Patent No. 8,577,813
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`NIDEC Motor Corp., IPR2014-01122, Paper 20 at 12 (Jan. 21, 2015); Ericsson Inc.
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`v. Intellectual Ventures I LLC, IPR2014-01149, Paper 31 at 10 (May 19, 2015)
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`(similar). UP’s proposed changes do not revise a minor clerical mistake, but rather
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`address a substantive argument that spans several pages. Ex. 1021 at 30-34, 46-50.
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`UP seeks to move all of the text addressing claims 7-10 from one argument
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`section to another, thereby seeking to alter the very grounds of the Petition without
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`changing the Petition’s filing date. See, e.g., Ex. 1021 at 6-7; Paper 9 at 2.
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`Specifically, the proposed move adds the additional reference Burger that was not
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`asserted against claims 7-10 in UP’s original Petition.
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`Contrary to UP’s claim, this error was not the result of a mere “cut-and-paste”
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`error. See Paper 9 at 2. Even if Ms. Callaghan, a patent attorney, “cut-and-pasted”
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`the discussion of claims 7-10 into the wrong section of the Petition, UP also
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`(i) provided a concise summary of its challenges that reflects the same purported
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`error, see Pet. at 4-5 (“Proposed Grounds of Unpatentability”); (ii) included section
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`headings that all indicate that claims 7-10 were intended to be in Ground 1, not
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`Ground 2, see Pet. at i, 7, 30-34; and (iii) submitted with the Petition a declaration
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`from Dr. Eric Cole that addresses claim 10 in a section regarding Ground 1 titled
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`“Obvious to Combine Maes, Pare, and Labrou.” Ex. 1009 at 22, 36.1 These sections
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`1 Dr. Cole’s declaration does not address claims 7-9.
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`2
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`U.S. Patent No. 8,577,813
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`of the Petition and Declaration do not even mention Burger, the reference UP’s
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`proposed change would assert for the first time against claims 7-10. UP should not
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`be permitted to perform wholesale changes to the grounds of the Petition under the
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`guise of 37 C.F.R. § 42.104(c). See, e.g., HBPSI – Hong Kong Ltd. v. Sram, LLC,
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`IPR2013-00174, Paper 10 at 8 (Oct. 3, 2016) (“Rule 104(c) does not give a petitioner
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`recourse to make substantial alterations to the substance of a proposed ground of
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`unpatentability”).
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`Moreover, clerical errors are mistakes committed by someone lacking the
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`authority to exercise discretion or judgment, such as a “clerk, writer, or copyist.”
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`Ford Motor Co. v. United States, 157 F.3d 849, 860 (Fed. Cir. 1988); see also
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`Zhongshan Broad Ocean Motor Co., Paper 20 at 13 (“[A] ‘clerical error’ may occur
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`when a clerk who is not charged with exercising discretion fails correctly to follow
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`instructions, but ‘[i]f the error had indeed been due in some measure to the party in
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`interest or the supervisor—those upon who a duty did devolve ‘to exercise original
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`thought or judgment’ in the matter—then making a correction would amount to more
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`than correcting a ‘clerical error.’”) (quoting Ford Motor, 157 F.3d at 860).
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`According to Ms. Callaghan’s declaration, “[b]etween October 3, 2017 and
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`October 16, 2017, through various drafting iterations, [she] received various
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`comments from [lead counsel] Mr. Mudd and others.” Paper 9 at 4, 6; Ex. 1020 at
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`3. Even accepting arguendo the dubious proposition that a patent associate attorney
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`U.S. Patent No. 8,577,813
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`is not required to exercise original thought and judgment, “[u]nquestionably, lead
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`counsel is [such] a person.” Zhongshan Broad Ocean Motor Co., Paper 20 at 13;
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`see id. at 13-14 (finding lead counsel’s role in error was relevant and distinguishing
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`cases determining errors were clerical, even though “a subordinate attorney is not
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`absolved from exercising original thought and judgment in a matter”). Lead counsel
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`cannot review (multiple times) and approve for filing a petition clearly stating in
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`multiple places—including the summary overview—that it is asserting Ground 1
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`against four claims and then claim (after PO’s Preliminary Response) that its failure
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`to assert Ground 2 against those claims instead was merely a “cut and paste” clerical
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`error. See Paper 9 at 2.
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`III. PTAB DECISIONS AND LEGISLATIVE HISTORY SUPPORT
`DENIAL OF PETITIONER’S MOTION
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`Unlike UP’s Petition, the petitions in the cases cited by UP included overt
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`indications that the errors were clerical or typographical in nature. In Merck Sharp
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`& Dohme Corp., v. Ono Pharmaceutical Co., Ltd., the Board found that the inclusion
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`of claim 7 in ground (ii) was a typographical error because other portions of the
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`petition discussed claim 7 in the context of ground (iii), rather than ground (ii).
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`IPR2016-01217, Paper 10 at 2-3 (Oct. 3, 2016). And in Amkor Tech., Inc. v. Tessera,
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`Inc., the Board permitted correction of unrelated claim language inadvertently
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`placed after “For claim 5,” because the surrounding context plainly indicated
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`petitioner intended to cite language from claim 5. IPR2013-00242, Paper 32 at 5-6
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`(Aug. 29, 2013). In contrast to the petitions in Merck and Amkor, UP’s Petition does
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`not include any supporting context that the purported “cut and paste” errors were
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`clerical or typographical in nature.
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`Instead, UP’s Motion to Correct closely resembles the motion the Board
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`denied in Ericsson, which (as here) sought to change the prior art reference asserted
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`against a claim element in response to the patent owner’s preliminary response.
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`Ericsson, Paper 31 at 2-3, 8-9, 12-13. Although Ericsson claimed it was merely
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`seeking to correct a “clerical error,” the Board denied Ericsson’s motion, finding that
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`the proposed changes were both substantive and untimely because they sought to
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`alter the grounds of the Petition after the preliminary response was filed. PO
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`respectfully requests the Board likewise deny UP’s motion for the same reasons.
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`Further, legislative history of 37 C.F.R. § 42.104(c) indicates that the Board
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`will not allow “the correction of a mistake that is not clerical or typographical in
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`nature without a change in filing date.” See 77 Fed. Reg. 48680, 48699 (Aug. 14,
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`2012). This aligns with the PTAB decisions above—minor clerical or typographical
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`errors are appropriate for correction, but substantive errors are not. Petitioners
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`should not be encouraged to file incomplete petitions that do not identify all grounds
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`for institution for each claim with the expectation that they may later seek correction
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`after patent owners file a preliminary response. Granting UP’s motion here would
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`U.S. Patent No. 8,577,813
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`prompt motions to allow all manner of substantive edits in the future.
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`IV. PETITIONER’S PROPOSED SUBSTANTIVE CHANGES,
`ALLOWED, WILL PREJUDICE PATENT OWNER
`
`IF
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`UP’s motion to alter the grounds of the Petition—if granted—would
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`significantly prejudice PO, especially because PO has already filed a preliminary
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`response with arguments addressing the Petition’s original grounds. TD Bank, N.A.
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`v. Global Session Holdings SRL, IPR2014-013591 et al., Paper 11 at 10 (Dec. 22,
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`2014) (“When determining whether to grant a motion to correct a petition, the Board
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`will consider any substantive effect. Here, the proposed correction . . . would raise
`
`issues the Patent Owner did not have a reasonable opportunity to consider in drafting
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`its Preliminary Response.”) (denying motion to correct).
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`Moreover, UP did not mention the substantive error until four months after it
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`filed the Petition and two weeks after PO filed the preliminary response. PO is
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`further prejudiced due to the increased time and cost to draft this brief and any
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`supplemental briefing necessary to address new grounds in a corrected Petition.
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`UP should not be granted a late-stage “do-over” after failing to give PO proper
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`notice of the grounds it was asserting against claims 7-10. The purpose of a petition
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`is to give a patent owner adequate notice of the basis for relief by setting forth
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`petitioner’s ground and supporting evidence. See Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48763 (Aug. 14, 2012). PO had no opportunity to consider the
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`6
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`newly proposed grounds in drafting its preliminary response. As discussed in
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`Section II, supra, nothing in UP’s Petition or accompanying declaration provided
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`any notice or reason to believe that claims 7-10 were intended to be in Ground 2.
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`Pet. at i, 4-5, 7, and 30-34; see also Ex. 1009 at 22, 36 (addressing claim 10 in
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`Ground 1). PO should not be prejudiced by UP’s error. See Paper 9 at 2.
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`In addition, UP’s request is untimely and, if granted, would materially disrupt
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`this proceeding. See Int’l Bus. Mach. Corp. v. Intellectual Ventures II LLC,
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`IPR2014-00660, Paper 17 at 2-3 (July 31, 2014) (denying motion to correct as
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`untimely after filing of preliminary response). Only eight weeks remain between
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`the filing of this opposition and the Board’s decision on institution. See 35 U.S.C.
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`§ 314(b). After time for necessary supplemental briefing to address Petitioner’s new
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`grounds (if correction is allowed by the Board), the time remaining for the Board to
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`decide institution will be even further abbreviated.
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`V. CONCLUSION
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`37 C.F.R. § 42.104(c) is limited to correcting clerical or typographical
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`mistakes; it does not permit substantive changes that prejudice PO. PO respectfully
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`requests the Board deny Petitioner’s Motion to Correct A Clerical Mistake Under 37
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`C.F.R. § 42.104(c). Should the Board grant the Motion to Correct, PO respectfully
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`requests six weeks to supplement its preliminary response in a brief of no more than
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`20 pages (UP does not oppose a supplemental submission, see Paper 9 at 7).
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`7
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`Date: March 9, 2018
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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` Respectfully submitted,
`
`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
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`8
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that PATENT
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`OWNER’S OPPOSITION TO PETITIONER’S MOTION TO FILE A
`
`CORRECTED PETITION UNDER 37 C.F.R. § 42.104(c), and all exhibits and other
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`documents filed together with this opposition, were served on March 9, 2018 by
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`filing these documents through the Patent Review Processing System, as well as by
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`e-mailing copies to:
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`
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`Jason R. Mudd, Reg. No. 57,700
`jason.mudd@eriseip.com
`
`Eric A. Buresh, Reg. No. 50,394
`eric.buresh@eriseip.com
`
`ptab@eriseip.com
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`
`Roshan Mansinghani, Reg. No. 62,429
`roshan@unifiedpatents.com
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX, 75240
`Telephone: (214) 945-0200
`
`Jonathan Stroud, Reg. No. 72,518
`jonathan@unifiedpatents.com
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C. 20009
`Telephone: (202) 805-8931
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`
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`9
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`Date: March 9, 2018
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` Respectfully submitted,
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`10
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