UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`SHOPIFY, INC.
`
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC
`
`Patent Owner
`
`Case IPR2018-01008
`Patent No. 9,639,876
`
`MOTION TO CORRECT MISTAKES IN PETITION UNDER
`37 C.F.R. § 42.104(c)
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`SHOPIFY, INC.
`
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC
`
`Patent Owner
`
`Case IPR2018-01008
`Patent No. 9,639,876
`
`MOTION TO CORRECT MISTAKES IN PETITION UNDER
`37 C.F.R. § 42.104(c)
`
`
`
`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`I.
`
`INTRODUCTION
`Petitioner Shopify, Inc. (“Petitioner”) moves to correct errors in the petition
`
`for inter partes review (“IPR”) in IPR2018-01008, and seeks leave to file a
`
`replacement version of the originally-filed petition, which replacement has been
`
`concurrently filed as Exhibit 1023. The Board authorized the filing of this motion
`
`in an email dated August 1, 2018.
`
`The proposed replacement petition corrects typographical errors in the
`
`Petitioner’s exhibit list, table of authorities, citations to the accompanying expert
`
`declaration, and the listing of claims being challenged under 37 C.F.R. §
`
`42.104(b)(2). The original petition erroneously named incorrect claim numbers in
`
`the listing of claims being challenged and the element-by-element analysis, even
`
`though the substance of the analysis addressed the intended claim elements.
`
`II.
`
`FACTS AND CIRCUMSTANCES OF THE ERRORS
`On May 3, 2018, Petitioner filed its original Petition (Paper No. 1) citing,
`
`under Ground 3 of Section IV.B, challenges to claims 1-5, 7-8, and 11-18 of U.S.
`
`Pat. No. 9,639,876 (the “’876 Patent”). Shortly thereafter, Petitioner realized that
`
`Ground 3 of Section IV.B should cite to claims 1-5, 7-8, 11-15, and 17-18.
`
`Petitioner further identified incorrect paragraph citations to the associated expert
`
`declaration.
`
`-2-
`
`
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`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`On May 4, 2018, counsel for Petitioner notified counsel for DDR Holdings,
`
`LLC (“Patent Owner”) of the errors and Petitioner’s intention to file a motion to
`
`correct them. On May 7, 2018, Petitioner provided a redline version of the petition
`
`to Patent Owner’s counsel. Patent Owner informed Petitioner on May 30, 2018,
`
`that they do not oppose this motion.
`
`On August 1, 2018, Petitioner sent an email to trials@uspto.gov requesting
`
`authorization from the Board to file a motion to correct the errors in the originally
`
`filed Petition.
`
`III.
`
`STATEMENT OF RELIEF REQUESTED
`Claims 1-5, 7-8, and 11-18 were mistakenly entered under Ground 3 of
`
`Section IV.B of the original Petition. Petitioner respectfully requests that it be
`
`allowed to correct its Petition by revising Ground 3 of Section IV.B to identify
`
`claims 1-5, 7-8, 11-15, and 17-18 as being obvious in view of prior art. The
`
`requested revision will allow Section IV.B to accurately reflect the element-by-
`
`element analysis of the Petition, and will not alter the substance of the Petition.
`
`Petitioner requests permission to modify erroneous citations to the expert
`
`declaration. The proposed paragraph modifications would accurately reflect the
`
`expert analysis of the ’876 Patent.
`
`Finally, Petitioner requests permission to correct errors in the Exhibit List
`
`and Table of Authorities of the Petition. The Exhibit List mistakenly includes
`
`-3-
`
`
`
`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`exhibits that, while properly included in related Petitions filed by Petitioner, do not
`
`apply to the Petition for Institution IPR2018-01008. Additionally, the Table of
`
`Authorities mistakenly includes irrelevant information, such as web addresses. A
`
`redlined proposed Corrected Petition tracking the proposed corrections has been
`
`filed as Ex. 1023.
`
`IV. ARGUMENT IN SUPPORT OF RELIEF REQUESTED
`The proposed changes should be applied because they relate to non-
`
`substantive, clerical transcription error that was not identified prior to filing, and
`
`Petitioner promptly sought to correct its mistakes after discovering them the day
`
`after filing. See 37 C.F.R. § 42.104(c) (“A motion may be filed that seeks to
`
`correct a clerical or typographical mistake in the petition.”). The proposed changes
`
`seek to correct the Petition to accurately reflect the analysis discussed in the expert
`
`declaration. That is, Petitioner’s requested corrections seek to identify the claims of
`
`the ’876 Patent to which the analysis properly applies. The Petitioner is not seeking
`
`to make changes to the arguments applied to the prior art – the grounds for the
`
`challenged claims will rise or fall based on the analysis already present in the
`
`Petition. See, e.g. Amkor Technology, Inc. v. Tessera Inc., IPR2013-00242, Paper
`
`32, at 5-6 (PTAB Aug. 29, 2013) (allowing correction of copying and pasting error
`
`by subordinate attorney where no new analysis was added by correction).
`
`-4-
`
`
`
`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`Correction of these errors will not prejudice Patent Owner or destroy the
`
`notice function of the Petition. Petitioner notified Patent Owner of the errors and
`
`Petitioner’s intent to file a motion to correct the day after filing the Petition, and
`
`promptly provided the Patent Owner with redline versions of the proposed
`
`corrections. Petitioner does not seek to alter substantive arguments, and Patent
`
`Owner has not yet submitted a response to the Petition. Patent Owner will retain its
`
`opportunity to address Petitioner’s same substantive arguments regarding the art
`
`specifically applied to the challenged claims of the ’876 Patent.
`
`The original Petition was filed before the one-year time bar. The proposed
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`corrections would not implicate the one-year time bar, as the grant of such motions
`
`under 37 C.F.R. § 104(c) does not change the filing date.
`
`Given the clerical nature of the errors, lack of prejudice to the Patent Owner,
`
`and Petitioner’s prompt efforts to correct the issues on their discovery, the
`
`proposed corrections are appropriate under Rule 104(c). See, e.g., ABB Inc. v.
`
`ROY-G-BIV Corp., IPR2013-00063, Paper 21, at 7 (PTAB Jan. 16, 2013) (Rule
`
`104(c) is “remedial in nature” and should be “liberally applied”) (citing Tcherepnin
`
`v. Knight, 389 U.S. 332, 336 (1967)).
`
`V.
`
`CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`apply the above-proposed corrections to Petitioner’s Petition for Inter Partes
`
`-5-
`
`
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`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`Review. Further, Petitioner certifies that the suggested corrections will not cause
`
`the Petition to exceed the word count limit of 37 C.F.R. § 42.24.
`
`Dated: August 6, 2018
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1884
`Facsimile: (617) 542-2241
`E-mails: MMcNamara@mintz.com;
`DDR_IPR_Service@mintz.com
`
`-6-
`
`
`
`IPR2018-01008
`U.S. Pat. No. 9,639,876
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Petitioner’s Motion to Correct and accompanying
`
`Exhibit is being served by electronic mail on the following counsel for the Patent
`
`Owner:
`
`Lead Counsel for DDR Holdings, LLC
`
`Back Up Counsel for DDR Holdings, LLC
`
`Louis J. Hoffman (Reg. No. 38,918)
`Louis J. Hoffman, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`Telephone: (480) 948-3295
`Emails: louis@valuablepatents.com;
`DDR_IPR@valuablepatents.com
`
`Justin J. Lesko (Reg. No. 69,643)
`Louis J. Hoffman, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`Telephone: (480) 948-3295
`Email: justinlesko@patentit.com
`
`Dated: August 6, 2018
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1884
`Facsimile: (617) 542-2241
`E-mails: MMcNamara@mintz.com;
`DDR_IPR_Service@mintz.com
`
`-7-
`
`
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