Running a bit short on space in your IPR brief? Think you might sneak one past the Board by stretching those margins by a tenth of an inch or two? Think again. It should come as no surprise given that the inter partes review and post grant review rules are very specific on brief length, font, spacing, etc., but the Board recently caught a party stretching the margins, and the party paid for it.
In CBS Interactive, et al. v. Hleferich Patent Licensing, LLC et al,, IPR2013-00033 (Paper 79), Patent Owner alleged that the margins of a reply brief filed by Petitioner are less than the 1 inch requirement of 37 CFR § 42.6(a)(2)(iv). CBS did not disagree, blaming a “clerical error.” The Board noted that, if proper margins were used, the reply would have exceeded the 15 page limit. Indeed, the Board went so far as to determine that about 15 lines of text would have fallen over the page limit. As such, the Board decided it will ignore those 15 lines of text in considering Petitioner’s reply brief.
Despite its mostly hard-line stance on compliance with the trial practice rules, the Board recently saved an administrative assistant who confused the filing of two petitions seeking inter partes review and jumbled several exhibits. The issue came to the fore in ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00063) because Patent Owner sought to use the mistake as a way to require Patent Challenger to move forward with a defective petition. The Board did not agree, allowing correction of the petition pursuant to 37 CFR §104(c).
[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §104(c) – A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.[/pullquote]
The Order itself comes to a reasonable and predictable conclusion, but in the meantime tells the story of an unfortunate series of events that caused erroneous filings with the PTAB and, ultimately, required three separate declarations to fix.
What is worthwhile noting, for future reference, however, is that the rules take into account the occasional need for correction of certain clerical errors. To that end, the Board found that 37 CFR §104(c) “is remedial in nature and is therefore entitled to a liberal interpretation.” As such, the Board rejected Patent Owner’s arguments, finding that uploading of incorrect documents was, indeed, a clerical error, and Patent Owner would have sufficient time to provide its preliminary response, among other rejected arguments.
So the Board has a heart after all! Parties cannot rely on a get out of jail card often, but the reasonableness of the Board’s stance in this case reflects well that minor, inconsequential errors will not lead to the wholesale destruction of a party’s case.