February 09, 2016

Ask Permission, Not Forgiveness: PTAB Authorization Required Before Filing Anything With Patent Office, Even Before Trial Is Instituted

To fix clerical or typographical errors, patent owners typically file a request for a certificate of correction with the U.S. Patent and Trademark Office (USPTO). However, during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) has exclusive jurisdiction over every action with every division at the USPTO involving that patent — including requests for certificates of correction — and the PTAB requires that patent owners ask permission before filing such requests. In Alarm.com Inc. v. Vivint, Inc., the PTAB clarified that its authority begins with the filing of a petition and not only when a trial is instituted. Thus, if an IPR petition has been filed on a patent, the patent owner should first seek permission from the PTAB before filing a request for a certificate of correction for that patent.

In Alarm.com Inc., Vivint (the patent owner) filed requests for certificates of correction for several of its patents, seeking to change the language of the claims after Alarm.com (the petitioner) filed petitions for IPR on those patents. The patent owner then referenced the changed claim language from the certificates of correction in several of its preliminary responses. As a result, the petitioner requested a phone conference with the panel of PTAB judges assigned to these cases to contest the filing of those requests and to raise the issue of whether the requested certificates of correction were simply an attempt to bypass petition arguments by substantively modifying the claim language.

During the phone conference, much of the discussion between the parties and PTAB judges focused on whether the patent owner should have requested permission before filing the requests for certificates of correction. The patent owner argued that the PTAB’s exclusive jurisdiction does not begin until trial is instituted, and pointed to several decisions by other PTAB panels that appeared to support its position that prior permission is not necessary. The PTAB, however, disagreed and concluded that it had jurisdiction over the patent owner’s requests for certificates of correction from the moment the petitions were filed.

The parties also disputed whether the requested certificates of correction included only typographical or clerical errors, or whether they also included “material changes” to the claims. In view of the circumstances, the PTAB authorized the petitioner to file a five-page reply to discuss the propriety of the patent owner’s requests. The PTAB did not grant the patent owner a chance to respond. The PTAB further noted that, if needed, the PTAB will review the patent owner’s requests for compliance with the pertinent laws and regulations.

Thus, Alarm.com illustrates the importance of requesting permission to file any certificates of correction on a patent at issue in an IPR after a petition has been filed. This is especially true where the changes proposed in a certificate of correction could be seen as an attempt to change the claims in a substantive manner, and not just fixing typographical errors. Here, the petitioner gained the right to weigh in on the certificates of correction via additional briefing, while the patent owner was forbidden from filing additional briefing.

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