A patent owner who wishes to use a certificate of correction to correct an alleged defect in a patent subject to a pending IPR must first obtain authorization from the PTAB before a request for certificate of correction can be filed. 37 CFR § 1.323. In Kingston Tech. Co., Inc. v. CATR Co., LTD., the Board denied the patent owner’s motion to request a certificate of correction. IPR2015-00559, Paper 44 (Nov. 6, 2015).
During a conference call with the Board, the patent owner sought authorization to file a motion to request a certificate of correction with respect to claims 1, 7, and 24 of the challenged patent, and the Board subsequently authorized the motion. In the motion, the patent owner argued that, as originally filed, “claim 1 correctly recited that ‘the cover is rotated with respect to the flash memory main body,” and that subsequent amendments to claims 1, 7, and 24 introduced an error in which the term “the cover” was replaced by term “the case,” causing the claims to recite “pivoting the case with respect to the flash memory main body.”
In support of its motion, the patent owner argued that the correction would not prejudice the IPR Petition because the correction would bring the claims into conformance with the construction applied by the Petition, and that the correction would meet the requirements of 35 U.S.C. § 255 and 37 C.F.R. § 1.323.
In its decision denying the patent owner’s motion, the Board noted that the patent owner had previously filed a request for a certificate of correction in 2006 which did not request correction of the error alleged in the patent owner’s current motion.
Further, the Board disagreed with the patent owner’s assertion that the Petitioner and the Petitioner’s declarant had applied the references to the claims as though the claims read as patent owner sought to correct, finding that the Petitioner and its declarant had analyzed the claims as currently drafted, including analyzing the recitation in claims 1, 7, and 24 of “pivoting the case with respect to the flash memory main body.” The Board noted that allowing potential changes to the claims “could lead to a moving target that is unfair to Petitioner,” especially since the oral hearing for the IPR proceeding was less than two months away.
As this decision shows, the Board is unlikely to grant a motion to request a certificate of correction if:
- the patent owner previously filed a filed a request for certificate of correction and did not seek to correct the alleged defect at that time; or
- the time of the correction would be unfair to the Petitioner in an IPR proceeding.