PTAB: Correction To Claim Of Priority Has No Impact Following A Final Written Decision In An IPR

Author:Mr Matthew Hartman and Rubén H. Muñoz
Profession:Akin Gump Strauss Hauer & Feld LLP

A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent's claim of priority did not apply retroactively in light of an already issued final written decision in an inter partes review (IPR).

Petitioner Emerson Electric Co. filed a petition for IPR challenging a patent owned by SIPCO, LLC (Patent Owner). The Board instituted the IPR and ultimately issued a final written decision finding obvious all challenged claims. A Federal Circuit appeal ensued, and while the appeal was pending, the Patent Office issued a certificate of correction changing the claim of priority in the challenged patent. Patent Owner had sought that correction in an attempt to remove as prior art a particular reference asserted in the IPR. Upon issuance of the certificate, the Federal Circuit granted Patent Owner's motion for remand with instructions for the Board to consider what effect, if any, the certificate had on the final written decision in the IPR.

On remand, Petitioner argued to the Board that the certificate of correction had no impact on the final written decision because under 35 U.S.C. § 255, which governs certificates of correction for errors such as that in a claim of priority, a certificate applies only prospectively to actions that arise after the certificate issues. In support of its argument, Petitioner pointed to the express language of § 255 which states that any certificate of correction that issues shall have an effect on "trial of actions . . . thereafter arising" (emphasis added). Petitioner further contended that allowing Patent Owner to change its patent at this stage of the proceeding essentially creates a "moving target" that would unfairly prejudice Petitioner. In response, Patent Owner countered that the language of § 255 instructing that a certificate of correction only applies prospectively does not apply to IPRs because an IPR is not a "trial of actions" under the statute. Patent Owner further argued that failing to give retroactive effect to a certificate of correction would waste Patent Office resources because "it would be illogical . . . to cancel claims of an uncorrected patent if the [Patent Office] has issued a certificate correcting the patent."

After considering the parties' positions, the Board sided with Petitioner and held that the certificate of correction had no impact on the final written decision in this proceeding. The...

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