Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 22
`Entered: March 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE and JOHN R. KENNY,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Patent Owner’s Motion to Cede Jurisdiction for Correction of Priority Claim
`37 C.F.R. §§ 1.323, 42.20
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 22
`Entered: March 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE and JOHN R. KENNY,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Patent Owner’s Motion to Cede Jurisdiction for Correction of Priority Claim
`37 C.F.R. §§ 1.323, 42.20
`
`
`
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`
`I. BACKGROUND
`The challenged patent (US 10,043,188, Ex. 1001, “the ’188 patent”)
`recites “[t]his application claims priority to and the benefit of previously
`filed and co-pending provisional Patent Application No. 61/472,556, entitled
`Background Investigation Web Services, filed on Apr. 6, 2011, which is
`hereby incorporated by reference for all purposes.” Ex. 1001, 1:6–10. The
`face of the patent does not reflect this benefit claim. Id. at [63]. Tyler
`Miller (“Patent Owner”) requests that we cede exclusive jurisdiction over
`the ’188 patent so that it can petition the Director to make a correction to the
`’188 patent’s priority claim. Paper 9 (“Mot.”). Guardian Alliance
`Technologies, Inc. (“Petitioner”) opposes. Paper 13 (“Opp.”).
`According to Patent Owner, due to a clerical error, an Application
`Data Sheet (ADS) filed on May 26, 2015, in the application that matured
`into the ’188 patent did not recite Patent Owner’s intended priority claim.
`Mot. 2. Rather, Patent Owner argues, it intended to recite the priority claim
`that is shown in the ADS for pending U.S. Patent Application
`No. 16/024,622 in the ADS for the application that matured into the ’188
`patent. Id. (citing Ex. 2017). Patent Owner represents that it was not aware
`of the potential defect with the ADS for the ’188 patent before filing the
`Petition (Paper 1, “Pet.”) and that any failure to claim the benefit of the
`provisional application was unintentional. Id.
`The sought correction of the ’188 patent could bear on whether art
`cited in the Petition (Ex. 1004, the POBITS reference) is prior art to the ’188
`patent. Pet. 6; Mot. 3–4.
`
`
` 2
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`
`II. ANALYSIS
`According to our rules, “[t]he Board may exercise exclusive
`jurisdiction within the Office over every involved application and patent
`during [a] proceeding, as the Board may order.” 37 C.F.R. § 42.3(a). For a
`party seeking to correct a patent,
`[t]he Office may issue a certificate of correction under the
`conditions specified in 35 U.S.C. 255 at the request of the
`patentee or the patentee’s assignee, upon payment of the fee set
`forth in § 1.20(a). If the request relates to a patent involved in
`an interference or trial before the Patent Trial and Appeal
`Board, the request must comply with the requirements of this
`section and be accompanied by a motion under § 41.121(a)(2),
`§ 41.121(a)(3) or § 42.20 of this title.
`37 C.F.R. § 1.323. The import of these rules is that, “[w]hen a patentee
`seeks to correct a patent that is subject to a post-issuance review proceeding,
`the patentee must first file a motion with the Board seeking authorization to
`petition the Director for a Certificate of Correction, asking the Board to
`temporarily cede its exclusive jurisdiction over the proceedings.” Honeywell
`Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1348 (Fed. Cir. 2019). According
`to the Federal Circuit,
`a patent owner subject to a post-issuance review proceeding
`must take three steps in order to file a petition for a Certificate
`of Correction: (1) seek authorization from the Board to file a
`motion, 37 C.F.R. § 42.20(b); (2) if authorization is granted,
`file a motion with the Board, asking the Board to cede its
`exclusive jurisdiction so that the patentee can seek a Certificate
`of Correction from the Director, 37 C.F.R. § 1.323; MPEP
`§ 1485; and (3) if the motion is granted, petition the Director
`for a Certificate of Correction under 35 U.S.C. § 255.
`Id. at 1349. As to the first step in Honeywell, we granted authorization to
`file the instant Motion in a teleconference with the parties on February 6,
`
` 3
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`2020. Ex. 1026 (transcript of the teleconference). Patent Owner files the
`instant Motion pursuant to the second step outlined in Honeywell.
`According to the Federal Circuit, “the Director—not the Board—will
`evaluate the merits of the patentee’s petition, including whether the mistake
`is of ‘minor character’ or ‘occurred in good faith.’” Id. (quoting 35 U.S.C.
`§ 255). The statute gives this authority to the Director, and the Director has
`not delegated that authority to the Board. Id. Rather, it is our purview to
`“review[] motions for leave to seek a Certificate of Correction from the
`Director to determine whether there is sufficient basis supporting Patent
`Owner’s position that the mistake may be correctable.” Id. (internal
`quotation marks and citation omitted). Specifically, it would be an abuse of
`discretion for us to require Patent Owner to prove to us that the requirements
`of Section 255 have been met. Id. at 1350.
`According to the MPEP,
`[w]here a benefit claim based upon 35 U.S.C. 119(e) to a prior
`provisional application is to be asserted or corrected in a patent
`via a certificate of correction, the following conditions must be
`satisfied:
`A. all requirements set forth in 37 CFR 1.78(a)(1) and
`(a)(2) must have been met in the application which
`became the patent to be corrected;
`B. it must be clear from the record of the patent and the
`parent application(s) that priority is appropriate (see
`MPEP § 211et seq.); and
`C. a grantable petition to accept an unintentionally
`delayed claim under 37 CFR 1.78(c) must be filed,
`including the petition fee as set forth in 37 CFR 1.17(m).
`MPEP § 1481.03(II). Rule 1.78(c), in turn, provides:
`
` 4
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
`prior-filed provisional application. If the reference required by
`35 U.S.C. 119(e) and paragraph (a)(3) of this section is
`presented in an application after the time period provided by
`paragraph (a)(4) of this section, the claim under 35 U.S.C.
`119(e) for the benefit of a prior-filed provisional application
`may be accepted if the reference identifying the prior-filed
`application by provisional application number was
`unintentionally delayed. A petition to accept an unintentionally
`delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-
`filed provisional application must be accompanied by:
`(1) The reference required by 35 U.S.C. 119(e) and
`paragraph (a)(3) of this section to the prior-filed
`provisional application, unless previously submitted;
`(2) The petition fee as set forth in § 1.17(m); and
`(3) A statement that the entire delay between the date the
`benefit claim was due under paragraph (a)(4) of this
`section and the date the benefit claim was filed was
`unintentional. The Director may require additional
`information where there is a question whether the delay
`was unintentional.
`37 C.F.R. § 1.78(c). Patent Owner submits the petition it intends to file,
`along with a corrected ADS, that purport to meet these requirements.
`Exs. 2011; 2015.
`Petitioner opposes Patent Owner’s Motion. Specifically, Petitioner
`argues that, because Patent Owner did not seek correction until after this
`proceeding started, any correction would not apply to this proceeding.
`Opp. 1, 3. Petitioner also argues that it would be prejudiced because “had
`[Patent Owner] sought correction in the two months between service of the
`
` 5
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`invalidity contentions[1] and the filing of the IPR Petition, Petitioner would
`have thought twice before drafting and submitting Ground 2 of the Petition,
`which relies on Ex. 1004 as the primary reference,” and “could have raised
`alternative grounds in its Petition if [Patent Owner] had timely sought
`correction.” Id. at 4–5.
`As to the first argument, if any correction would not apply to this
`proceeding (an issue we do not decide now), then Petitioner should have no
`objection to Patent Owner seeking correction, as it will have no bearing on
`this proceeding. As to the second argument, it is unclear whether it is
`applicable here because Patent Owner did not seek correction before the
`Petition was filed and Petitioner contends that any correction now will not
`affect this proceeding. In any case, Petitioner was aware of Patent Owner’s
`benefit claim and the potential defect therein, as Petitioner raised the issue in
`its Petition (Pet. 6), and should not be surprised that Patent Owner would
`seek correction. Assuming Petitioner is incorrect, and correction of the ’188
`patent (should it happen) is applicable to this proceeding, nothing prevented
`Petitioner from raising such “alternative grounds” in the Petition in
`anticipation of Patent Owner’s correction attempt.
`Petitioner also argues that, were we to allow Patent Owner to seek
`correction, we would risk two different authorities within the USPTO (the
`Board and the Certificates of Correction Branch) rendering conflicting
`
`
`1 Petitioner contends that its real party-in-interest, Oklahoma City, served on
`Patent Owner, in co-pending district court litigation on August 8, 2019,
`invalidity contentions that discussed the priority date of the ’188 patent and
`that should have alerted Patent Owner to the need for the correction it now
`seeks. Opp. 4 (quoting Ex. 1032, 2).
`
` 6
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`outcomes. Opp. 2. As noted above, the Director has not delegated to us the
`authority to render a decision on the merits of Patent Owner’s desired
`certificate of correction. See Honeywell, 939. F3d at 1349–50. Thus, only
`one authority within the USPTO will render a decision on the
`appropriateness of the correction.
`As noted above, Petitioner also argues that Patent Owner was made
`aware of the potential defect in its benefit claim in co-pending district court
`litigation, more than two months prior to Patent Owner’s current Motion to
`seek correction. Opp. 3–4. According to Petitioner, “[i]t’s unclear exactly
`what information in the Petition made [Patent Owner] realize the existence
`of the priority defect only upon reading the Petition as the invalidity
`contentions [Oklahoma City] served on [Patent Owner] describe the defect
`in detail.” Id. at 4 (quoting Ex. 1032, 2). To the extent Petitioner is
`challenging the “good faith” or “unintentionally delayed” nature of Patent
`Owner’s correction attempt, that too is an issue that has not been delegated
`to us to decide. See Honeywell, 939. F3d at 1349.
`We have analyzed the petition Patent Owner seeks to file (Exs. 2011,
`2015) and conclude that “there is sufficient basis supporting Patent Owner’s
`position that the mistake may be correctable.” Honeywell, 939 F.3d at 1349.
`Petitioner’s arguments in opposition, Opp. 1–5, are either unpersuasive or go
`to the merits of Patent Owner’s petition, which we do not have the authority
`to resolve, Honeywell, 939 F.3d at 1349. Accordingly, we cede exclusive
`jurisdiction over the ’188 patent and grant Patent Owner permission to file a
`petition to the Director to accept an unintentionally delayed claim under
`35 U.S.C. § 119(e) for the benefit of a prior-filed provisional application.
`See 37 C.F.R. § 1.78(c).
`
` 7
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`
`III. Order
`
`For the foregoing reasons,
`
`It is ORDERED that Patent Owner’s Motion to Cede Jurisdiction for
`Correction of Priority Claim (Paper 9) is granted; and
`
`It is FURTHER ORDERED that Patent Owner has permission to file
`with the Director, for the ’188 patent, a petition, pursuant to 37 C.F.R.
`§ 1.78(c), to accept an unintentionally delayed claim under 35 U.S.C.
`§ 119(e) for the benefit of a prior-filed provisional application.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 8
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`For PETITIONER:
`Jordan Sigale
`Douglas Sorocco
`DUNLAP CODDING, P.C.
`jsigale@dunlapcodding.com
`dsorocco@dunlapcodding.com
`
`For PATENT OWNER:
`Richard McLeod
`MCLEOD LAW LLC
`law@rickmcleod.com
`
`Kurt Rylander
`RYLANDER & ASSOCIATES PC
`Rylander@rylanderlaw.com
`
`
`
`
` 9
`
`
`
`
`
`
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
