A Reprieve

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Suprisingly the Board granted a reprieve to a petitioner who uploaded the papers, but failed to complete the filing process.  In Linvatech Corporation v. Bonutti Skeletal innovations LLC, IPR2013-00624, Paper 22 (March 14, 2014), the Board denied patent owner’s request for rehearing of the Board’s decision to grant Petitioner’s renewed motion to correct the filing date accorded to the petition.  Petitioner uploaded the petition on September 25, 2013, but no one clicked the “submit” button until October 2, 2013, more than one year from service of an infringment complaint.  In its prelimary response, the patent owner argued the Petition was barrred.  The petitioner filed a motion to correct the filing date, which the Board denied with leave to refile.  The petitioner filed a renewed motion, which was granted, setting up the instant petition for rehearing by the patent owner.

The Board determined that Petitioner satisfied the statutory and regulatory requirements for filing a complete petition on September 25, 2013, but for clicking the “Submit” button in the Patent Review Processing System, and concluded that Petitioners’ inadvertent delay in clicking the “Submit” button until October 2, 2013, was a clerical error. On rehearing, the patent owner argued that Petitioner is not entitled to relief under 37 C.F.R. § 42.104(c) because it did not admit to making a clerical error. The Board noted that the rule “is remedial in nature and is therefore entitled to a liberal interpretation.” ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013). When, as here, the record supports a finding that a clerical error occurred, the Board may grant appropriate relief under 37 C.F.R. § 42.104(c) whether the party making the error admits to it or not. The Board also found it could grant relief under 37 C.F.R. § 42.5(b) to waive the regulatory requirement that electronic filing is completed only upon clicking the “Submit” button in PRPS.

Accordingly, Patent Owner’s request for rehearing was granted to the extent the Board modified its our prior decision to invoke 37 C.F.R. § 42.5(b), but was denied in all other respects.

 

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.