In Schott Gemtron Corp. v. SSW Holding Company, Inc., the Patent Trial and Appeal Board (PTAB) granted the Petitioner’s motion to correct the filing date of its IPR petition based on a “clerical error” in uploading an incorrect exhibit. IPR2014-00367, Paper 30 (Sep. 22, 2014).
The IPR petition, filed on January 18, 2014, listed Exhibit 1109 as an expert’s supporting declaration.
However, Petitioner’s counsel inadvertently labeled two files as Exhibit 1109 and mistakenly uploaded a copy of a U.S. patent application as Exhibit 1109.
Upon discovering the error, Petitioner’s counsel filed the declaration on the next business day, January 21, 2014. However, because the petition as originally filed did not include a copy of the declaration as required by 35 U.S.C. § 312(a)(3)(B), it was accorded a filing date of January 21, 2014.
In ruling on the Petitioner’s motion, the PTAB found that uploading the incorrect version of the exhibit was a “clerical error” and that it would be “appropriate under the circumstances to correct the filing date” to January 18, 2014.
The PTAB noted that the exhibit list and petition referenced the declaration as Exhibit 1109 throughout, that Petitioner had served the Patent Owner with a copy of the declaration on January 18, and that “[s]imilar errors have been found correctable in other proceedings, upon a sufficient showing from the filing party that the error was clerical in nature.”
As this decision shows, documents filed in IPR proceedings should be reviewed immediately upon filing to ensure correctness (which was also suggested by the Board), and any error should be brought to the PTAB and the other party promptly, as correction might be possible.
This may be critical in situations where there is a deadline to file the IPR, e.g., within a year of service of a complaint for patent infringement.