The Patent Trial and Appeal Board recently granted a patent owner’s request to seek a certificate of correction for certain claims of a patent undergoing an inter partes review (“IPR”). In granting the request, the board ceded its exclusive jurisdiction to allow the patent owner to seek a certificate of correction from the Director under 35 U.S.C. § 255. In reaching its conclusion, the board answered in the affirmative the question of whether the patent owner had shown a sufficient basis that the mistake in the claims may be correctable. And as such, the board’s ruling permits the Patent Office to potentially correct claims held indefinite by a district court in a parallel litigation.
The petitioner in this case sought IPR of some, but not all, claims of the patent under review. After considering the patent owner’s preliminary response, the board instituted trial. Soon after institution, the patent owner filed its motion seeking leave to petition the Director for a certificate of correction related to certain claims not under review in the IPR. According to the patent owner, those claims included a mistake correctable under § 255. The petitioner filed an opposition and the patent owner subsequently filed a reply.
In analyzing the patent owner’s motion, the board explained that the Federal Circuit in Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349–50 (Fed. Cir. 2019) describes the three steps a patent owner must take when seeking a certificate of...
