Best Medical International, Inc.

Patent Trials and Appeals Board

May 1, 2020

IPR2020-00075 (P.T.A.B. May. 1, 2020)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 May 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VARIAN MEDICAL SYSTEMS, INC.,
Petitioner,
v.

BEST MEDICAL INTERNATIONAL, INC.,
Patent Owner.

IPR2020-00075
Patent 6,038,283

Before KARL D. EASTHOM, WILLIAM V. SAINDON,
and JOHN A. HUDALLA, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Denying Motion to Correct Petition
37 C.F.R. § 42.104(c)
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

IPR2020-00075
Patent 6,038,283

2

As authorized by our Order of November 13, 2019 (Paper 4),
Petitioner filed a Motion to Correct a Clerical Error and Show Proper
Service of the Petition on November 18, 2019 (Paper 5, “Motion” or
“Mot.”). With the Motion, Petitioner filed a proposed substitute Petition
(Ex. 1037) challenging claims 1, 6, 10, and 22–24 of U.S. Patent No.
6,038,283 A, Ex. 1001 (the “’283 patent”). Patent Owner opposed the
Motion on November 25, 2019 (Paper 8, “Opposition” or “Opp.”).1
While filing all of its initial papers on October 18, 2019, Petitioner did
not file an actual petition and instead mistakenly filed a copy (Paper 2) of its
Power of Attorney (Paper 1). See Mot. 4–5; Ex. 1038 ¶ 8. The duplicate
Power of Attorney (Paper 2) was incorrectly designated as a “[p]etition” in
PTAB’s filing system. See Ex. 1038 ¶ 8.
Petitioner argues that mistakenly filing a duplicate Power of Attorney
in lieu of a petition represents a “clerical . . . mistake in the petition” under
37 C.F.R. 42.104(c). See id. at 4–5. As such, Petitioner moves “to correct a
clerical . . . mistake in the petition” by filing the substitute Petition
(Ex. 1037). Id. (quoting 37 C.F.R. § 42.104(c)).
Notwithstanding having originally filed a Power of Attorney as its
petition, Petitioner also requests that the Board accord a filing date of
October 18, 2019 to the substitute Petition (Ex. 1037) that Petitioner filed on
November 18, 2019 with its Motion. See id. (noting that § 42.104(c)
specifies “[t]he grant of such a motion does not change the filing date of the
petition”).

1 Paper 8 is a substitute Opposition. By e-mail, we authorized Patent Owner
to file the substitute Opposition after Patent Owner filed an earlier
Opposition (Paper 7) exceeding the authorized page limit in the Order. See
Ex. 2009; Paper 8, ii.
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Patent 6,038,283

3

On October 18, 2018, exactly a year prior to Petitioner’s mistaken
filing of the duplicate Power of Attorney, Patent Owner served Petitioner
with a complaint alleging infringement of the ’283 patent in Best Medical
International, Inc. v. Varian Medical Systems, Inc., and Varian Medical
Systems International AG, Case 1:18-cv-01599 (D. Del.). See Ex. 1037, 17;
Paper 3, 2. Accordingly, October 18, 2019 constitutes the “1 year” deadline
imposed by 35 U.S.C. § 315(b). Therefore, absent the relief Petitioner seeks
in its Motion, § 315(b) bars the substitute Petition filed on November 18,
2019. Indeed, the parties agreed during a teleconference that a filing date for
a petition after October 18, 2019 would run afoul of the one-year statutory
bar under 35 U.S.C. § 315(b). Order 2 (citing Paper 3); accord Opp. 1.
For the reasons set forth below, we determine that filing the duplicate
Power of Attorney does not constitute a “clerical or typographical mistake in
the petition” under 37 C.F.R. § 42.104(c). We also determine that Petitioner
failed to file a petition according to statutory requirements in 35 U.S.C.
§§ 311, 312(3) within the statutory period mandated by 35 U.S.C.
§ 315(b). Accordingly, we deny Petitioner’s Motion and deny institution of
an inter partes review of the ’283 patent.
No material factual dispute exists on this record. On October 18,
2019, during the evening of the statutory deadline under § 315(b),
Petitioner’s legal assistant began uploading documents supporting a petition
challenging claims of the ’283 patent. See Motion 1–2; Ex. 1038 ¶¶ 5–6;
Opp. 3. Petitioner’s counsel e-mailed the final PDF version of the petition to
the legal assistant 11 minutes before the statutory deadline expired, namely,
on “October 18, 2019 at 11:49 PM EDT.” Ex. 1038 ¶ 7. Then, the legal
assistant mistakenly uploaded the wrong document, a duplicate Power of
IPR2020-00075
Patent 6,038,283

4

Attorney (Paper 2), believing she instead had uploaded the petition. See
Ex. 1038 ¶¶ 8–10. She then “received a [p]etition receipt dated October 18,
2019 23:51:04” even though she had uploaded a duplicate Power of
Attorney. See id. ¶ 9; Paper 2 (duplicate Power of Attorney as purported
petition). Three days later, “Petitioner first became aware that a duplicative
Power of Attorney had been uploaded as the [p]etition paper.” Mot. 2
(citing Ex. 1039 ¶ 9).
In summary, according to Petitioner, “all documents in IPR2020-
00075 were filed on October 18, 2019, but for a clerical error that resulted in
the accidental filing of a duplicative Power of Attorney document as Paper 2
instead of the correct [p]etition document.” Mot. 4 (citing Ex. 1038 ¶ 12)
(emphasis added). Petitioner’s legal assistant testifies “[i]n retrospect . . . I
appear to have committed a clerical error as a result of identifying the
incorrect document within the shared drive folder that contained both the
correct [p]etition . . . and the Power of Attorney.” Ex. 1038 ¶ 12. In other
words, Petitioner effectively concedes that it did not file a petition (i.e., “the
correct petition document”) prior to the § 315(b) deadline. See Mot. 4.
Patent Owner responds in Opposition that 37 C.F.R. § 42.104(c) does
not apply here. Opp. 1, 4. Patent Owner characterizes Petitioner’s efforts to
file a petition as “wait[ing] until the last day to attempt to institute an [inter
partes review] on” the ’283 patent, and asserts that this “procrastination
resulted in fatal flaws.” Id. at 1. Patent Owner also asserts that Petitioner
did not file a petition prior to the “1 year” deadline imposed by § 315(b), and
“the Board lacks the authority to waive the statutory time-bar.” Id. at 10; see
also id. at 2–5.
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Patent 6,038,283

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An inter partes review proceeding begins with the filing of a petition.
See 35 U.S.C. §§ 311, 312, 314. This filing provides adequate notice to a
patent owner of the basis for relief by laying out a petitioner’s grounds and
supporting evidence. See Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,763 (Aug. 14, 2012) (“Trial Practice Guide”) (“Proceedings
begin with the filing of a petition. The petition lays out the petitioner’s
grounds for review and supporting evidence, on a claim-by-claim basis, for
instituting the requested proceeding.”). The Trial Practice Guide explains
“[g]enerally, the standards required for a petition are those set by statute for
the proceeding requested.” Id. (citing 35 U.S.C. § 312(a)) (emphasis added).
Under 35 U.S.C § 312(a), “[a] petition filed under section 311 may be
considered only if” it meets certain conditions. 35 U.S.C. § 312(a)
(emphasis added). Particularly, under § 312(a)(3), the petition must
“identif[y], in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence that
supports the grounds for the challenge to each claim.”
By filing the duplicate Power of Attorney instead of a petition on
October 18, 2018, Petitioner failed to satisfy the statutory requirements
listed under 35 U.S.C. § 312(a)(3). And as noted above, under § 312(a), “[a]
petition filed under section 311 may be considered only if” (emphasis added)
it satisfies those statutory requirements. Accordingly, Petitioner failed to
file a petition satisfying the requirements of §§ 311, 312(a)(3) before the
1 year deadline imposed by § 315(b).
Nevertheless, as noted above, Petitioner seeks relief under 37 C.F.R.
§ 42.104(c). Under § 42.104(c), as Petitioner argues, “[a] motion may be
filed that seeks to correct a clerical or typographical mistake in the petition”
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Patent 6,038,283

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and “[t]he grant of such a motion does not change the filing date of the
petition.” Mot. 4 (quoting 37 C.F.R. § 42.104(c)). As also noted above,
Petitioner argues “all documents in IPR2020-00075 were filed on
October 18, 2019, but for a clerical error that resulted in the accidental filing
of a duplicative Power of Attorney document as Paper 2 instead of the
correct [p]etition document.” Id. (citing Ex. 1038 ¶ 12). Petitioner further
relies on nonprecedential Board decisions, such as ABB Inc. v. ROY-G-BIV
Corp., IPR2013-00063, Paper 21 at 6–7 (PTAB Jan. 16, 2013) (single judge
decision on motion holding the filing of the wrong petition constitutes a
correctible clerical error under Rule 104(c)). See id. at 4–5.2
Patent Owner contends that § 42.104(c) does not apply here, because
Petitioner does not show a mistake in a filed petition. See Opp. 4–5. We
agree. As Patent Owner argues, under 37 C.F.R. § 42.104(c), “[a] motion
may be filed that seeks to correct a clerical or typographical mistake in
the petition” and “[t]he grant of such a motion does not change the filing
date of the petition.” See id. at 4 (quoting 37 C.F.R. § 42.104(c))
(emphasis by Patent Owner). With reference to this language in the
regulation, Patent Owner persuasively explains why 37 C.F.R. § 42.104(c)
does not apply here:

2 In addition to ROY-G-BIV, Petitioner cites the following two Board cases:
Cordelia Lighting, Inc. v. Cooper Lighting, LLC, IPR2017-01860, Paper 13
(PTAB Oct. 24, 2017); and Smart Modular Techs. Inc. v. Netlist, Inc.,
IPR2014-01373, Paper 9 (PTAB Sept. 17, 2014), Paper 12 (PTAB Sept. 22,
2014), Paper 13 (PTAB Sept, 24, 2014). See id. Cordelia Lighting relies on
ROY-G-BIV as persuasive authority based on similar factual records.
Cordelia Lighting, Paper 13 at 6. Smart Modular did not reach a decision on
37 C.F.R. § 42.104(c), but denied institution for other reasons. See Smart
Modular, Paper 12 (motion to correct clerical error); id., Paper 16 (decision
denying institution without addressing the motion).
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Patent 6,038,283

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[Petitioner]’s problems are not found “in the petition,” as the rule
requires. See [37 C.F.R. § 42.104(c)]. Instead, [Petitioner]’s
problems result from a failure to file the petition in the first place.
This distinction is even noted in the rule – by overtly stating that
granting such a motion “does not change the filing date of the
petition.” Id., see also 35 U.S.C. §§ 311, 312, 314, 315.
Opp. 4 (quoting 37 C.F.R. § 42.104(c)) (emphasis by Patent Owner). Under
the particular facts of this case involving no timely filed petition, we decline
to apply the correction provision of § 42.104(c) petition.
The Motion provides a string citation to ROY-G-BIV and other
nonprecedential Board cases (see supra note 2) to support Petitioner’s
argument that “[s]imilar clerical errors that resulted in the inadvertent filing
of an incorrect document as the ‘Petition’ have been found correctable in
other proceedings.” See Mot. 4–5. Nonprecedential Board cases do not bind
Board panels, and Petitioner does not show persuasively that 37 C.F.R.
§ 42.104(c) applies to the different facts at issue here. Unlike ROY-G-BIV,
the Petitioner in the present case did not file any petition on time.
For the reasons discussed above, Petitioner fails to satisfy its burden
of proof on the Motion to correct a clerical or typographical mistake in a
petition. Accordingly, we deny Petitioner’s Motion. As also discussed
above, Petitioner filed the substitute Petition (Exhibit 1037) on
November 18, 2019, after the 1 year deadline of October 18, 2019 imposed
by § 315(b). Therefore, § 315(b) bars the substitute Petition. Accordingly,
we deny institution.
ORDER
In light of the foregoing, we
ORDER that Petitioner’s Motion is denied; and
IPR2020-00075
Patent 6,038,283

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FURTHER ORDER that institution based on the substitute Petition
(Ex. 1037) is denied and no trial is instituted.

FOR PETITIONER:

Heidi L. Keefe
Xiaozhen Yu
COOLEY LLP
hkeefe@cooley.com
syu@cooley.com

PATENT OWNER:

Anthony H. Son
Matthew Ruedy
Kaveh Saba
Jeremy Edwards
MADDOX EDWARDS PLLC
ason@meiplaw.com
mruedy@meiplaw.com
ksaba@meiplaw.com
jedwards@meiplaw.com