Takeaway: Even in situations where a motion to correct a clerical mistake in a petition is unopposed, the motion must still set forth a full statement of the reasons why the petitioner is entitled to the relief requested.

In its Decision, the Board denied Petitioner’s unopposed Motion to Correct a Clerical Mistake in the Petition without prejudice. The Petition referred to Exhibit 1007 as Publication No. 2002/0000916 A1, but the filed Exhibit 1007 was a copy of the issued patent corresponding to the referenced publication.

Petitioner sought to file a corrected version of Exhibit 1007, and Patent Owner did not oppose. The Board authorized Petitioner to file a motion to correct Exhibit 1007, and Petitioner did so.  However, the Board denied the Motion without prejudice, finding that Petitioner had not established it was entitled to the relief requested.

37 C.F.R. § 42.104(c) authorizes the filing of a motion to correct “a clerical or typographical mistake in the petition.”  However, pursuant to 37 C.F.R. § 42.22(a)(2), the movant must “set forth a ‘full statement of the reasons for the relief requested,’ including a detailed explanation of the significance of the material facts and evidence.”  The Board noted that the only basis provided in the Motion was a conclusory statement that a clerical error led to the filing of the issued patent instead of the referenced publication.  The Board also noted that the Motion did not explain what was the error or the circumstances surrounding that error.  The Motion also failed to address the potential substantive effect, such as any effect on Patent Owner’s ability to file a preliminary response, the requested relief might have.

Thus, the Board denied the Motion but authorized the filing of a second Motion.

FedEx Corporation v. IpVenture, Inc., IPR2014-00833
Paper 10: Decision on Motion to Correct a Clerical Mistake in the Petition
Dated: October 24, 2014
Patent: 8,725,165 B2
Before: Kristen L. Droesch, Michael R. Zecher, and J. John Lee
Written by: Lee