PTAB Exercises Exclusive Jurisdiction Over Patents Involved in IPR ( Inc. v. Vivint, Inc.)

McDermott Will & Emery

Addressing the issue of jurisdiction during an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) exercised exclusive jurisdiction over several requests for certificates of correction, which were filed after IPR petitions had already been filed. Inc. v. Vivint, Inc., Case IPR2015-01995 (PTAB, Jan. 28, 2016) (Boudreau, APJ).

The petitioner, Inc., filed nine IPR petitions seeking review of certain claims in four patents owned by the patent owner, Vivint. After the petitions were filed, the patent owner filed requests for certificates of correction with respect to each of the four patents. The patent owner did not request authorization from the Board prior to filing the requests and did not notify the Board upon their filing. Instead, the patent owner filed preliminary responses in four of the IPR proceedings and referenced the corresponding requests for certificates of correction.

Because the requests were filed after the petitions, the Board exercised jurisdiction over the patent owner’s requests for certificates of correction in the related proceedings and stayed the requests pending the decision on institution in the related proceedings. The Board ordered that, for any claims for which correction is sought and for which IPR is instituted, consideration of the requests by the Certificate of Correction Branch would be stayed during the pendency of trial. During trial, the Board would make a determination whether or not the certificates of correction should be granted. If the Board determines not to institute review of any claims for which correction is sought, the patent owner’s requests would be returned to the Certificate of Correction Branch for further action.

The Board distinguished the patent owner’s requests from non-precedential decisions granting requests relating to certificates of correction. The Board noted that such requests had previously been granted when a patent owner sought authorization from the Board prior to filing a request or motion; when a patent owner sought to correct a claim not involved in an IPR proceeding; when a patent owner sought correction of an error by the USPTO, rather than by the patentee; and when a patent owner merely sought to file a copy of a certificate of correction that issued from a request filed before the petition was filed.

Practice Note: If possible, a patent owner should file any request for a certificate of correction before an IPR petition is filed. Once a petition is filed, a request should be filed only after seeking authorization from the Board.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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