UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`SHOPIFY, INC.
`
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC
`
`Patent Owner
`
`Case IPR2018-01011
`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 IPR2018-01011
`Patent No. 9,639,876
`
`MOTION TO CORRECT MISTAKES IN PETITION UNDER
`37 C.F.R. § 42.104(c)
`
`
`
`IPR2018-01011
`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 IPR2018-01011, 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 consisting
`
`of incorrect exhibit citations. The original petition erroneously included citations to
`
`Exhibit 1010 rather than Exhibit 1007, as intended and as evidenced by the
`
`Petition’s Exhibit List.
`
`II.
`
`FACTS AND CIRCUMSTANCES OF THE ERRORS
`On May 2, 2018, Petitioner filed its original Petition (Paper No. 1)
`
`challenging various claims of U.S. Pat. No. 9,639,876 (the “’876 Patent”). Shortly
`
`thereafter, Petitioner realized that the body of the Petition incorrectly cited to
`
`evidence within Exhibit 1010 (U.S. Patent No. 6,330,575; “Moore”) rather than
`
`Exhibit 1007 (Web Page of Corel; “Corel”).
`
`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
`
`-2-
`
`
`
`IPR2018-01011
`U.S. Pat. No. 9,639,876
`
`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
`The original Petition mistakenly cites to Exhibit 1010 in its analysis of the
`
`challenged claims, rather than Exhibit 1007, though from the context it is clear that
`
`Exhibit 1007 should have been cited. Petitioner respectfully requests that it be
`
`allowed to correct its Petition by revising the citations so that they read as “Exhibit
`
`1007”, and thereby accurately reflect the conducted expert analysis. The requested
`
`revision will not alter the substance of the Petition. 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 a 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
`
`-3-
`
`
`
`IPR2018-01011
`U.S. Pat. No. 9,639,876
`
`declaration. That is, Petitioner’s requested corrections seek to identify the prior art
`
`exhibit 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, other than correcting the cited exhibit numbers. 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).
`
`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 promptly after filing the Petition, and
`
`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
`
`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.
`
`-4-
`
`
`
`IPR2018-01011
`U.S. Pat. No. 9,639,876
`
`Given the clerical nature of the typographical 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
`
`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
`
`-5-
`
`
`
`IPR2018-01011
`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
`
`-6-
`
`
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
