Takeaway: The Board explained that attorneys should be able to recognize submissions of documents that “technically” do not comply with the rules, but which cause no prejudice, and stipulate to file a corrected document that saves all involved time and expense.

In its Decision, the Board granted Petitioner’s motions to accept verified translations, which were opposed by Patent Owner.

When a document is in a foreign language, and a party intends to rely on the document, the party should submit as a single exhibit (1) a copy of the document in the foreign language, (2) a translation of the document into English, and (3) an affidavit attesting to the accuracy of the translation. 37 C.F.R. § 42.63(b). The translations of the foreign language documents filed by Petitioner did not comply with the necessary requirements.

Petitioner was authorized and filed Motions to Submit a Corrected Exhibit and Patent Owner filed Oppositions to the Motions. Petitioner also filed a declaration of Petitioner’s lead counsel explaining why proper translations inadvertently were not field with the Petitions. Specifically, Petitioner maintained that the translations were filed improperly by a “clerical mistake.” In the Oppositions, Patent Owner did not allege that any of the translations were incorrect, and did not allege any credible prejudice that Patent Owner would suffer by having Petitioner correct the errors in filing the translation.

The Board explained that the “conduct of proceeding” rule provides that “[t]he Board may waive or suspend a requirement of . . . [part] 42 and may place condition on the waiver or suspension.” 37 C.F.R. § 42.5(b). Also, the “conduct of proceeding” rule also provides that the Board may accept a paper filed out-of-time “upon a Board decision that consideration on the merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3).

The Board explained that the improper translation issue could have been settled by a stipulation of the parties to allow submission of the corrected verified translations, and that Patent Owner opposing the motions caused unnecessary expenses on the part of the parties and burdened the Board. Accordingly, the Board granted Petitioner’s motions and waived under 37 C.F.R. § 42.5(b) the requirements of any rule that might have been technically violated. The Board also accepted substitute verifications under 35 U.S.C. § 26.

Volkswagen Group of America v. Emerachem Holdings, LLC, IPR2014-01555; IPR2014-01556; IPR2014-01558
Paper 20, 18: Decision on Motions to Submit Corrected Translations
Dated: March 16, 2015 Patent 5,451,558; 5,953,911; 5,599,758
Before: Fred E. McKelvey, James T. Moore, and Sheridan K. Snedden
Written By: McKelvey