IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Parrot S.A. and Parrot, Inc.
`Petitioners,
`v.
`Drone Technologies, Inc.
`Patent Owner
`
`
`
`
`Case IPR2014-00730
`U.S. Patent No. 7,584,071
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`MOTION TO CORRECT EXHIBIT
`TO PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Parrot S.A. and Parrot, Inc.
`Petitioners,
`v.
`Drone Technologies, Inc.
`Patent Owner
`
`
`
`
`Case IPR2014-00730
`U.S. Patent No. 7,584,071
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`MOTION TO CORRECT EXHIBIT
`TO PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`Case IPR2014-00730
`Patent 7,584,071
`
`
`PETITIONER’S REVISED EXHIBIT LIST
`
`Exhibit #
`
`Reference Name
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`U.S. Patent No. 7,584,071 (the ’071 Patent)
`
`U.S. Patent No. 5,043,646 (“Smith”)
`
`French Patent Publication No. 2,789,765 to Potiron
`
`Certified English Translation of French Patent No.
`2,789,765 (“Potiron”)
`
`U.S. Patent No. 7,219,861 (“Barr”)
`
`U.S. Patent No. 6,751,529 (“Fouche”)
`
`U.S. Patent Application Publication No. 2006/0144994 to
`Spirov (“Spirov”)
`
`U.S. Pat. No. 7,145,551 (“Bathiche”)
`
`U.S. Pat. Pub. No. 2004/0263479 (“Shkolnikov”)
`
`Expert Declaration of Prof. Raffaello D’Andrea, with
`Attachments A-C
`
`Ex. 1010, Att. A U.S. Patent No. 613,809 to Tesla (“Tesla”)
`
`Ex. 1010, Att. B U.S. Patent No. 3,101,569 to Giardina (“Giardina”)
`
`Ex. 1010, Att. C U.S. Patent No. 8,072,417 to Jouanet (“Jouanet”)
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`
`
`Claim Chart Demonstrating Invalidity of the ’071 Patent
`
`Declaration of Deborah A. Skolaski
`
`Declaration of James E. Hopenfeld
`
`Declaration of Prof. Raffaello D’Andrea
`
`i
`
`
`
`Case IPR2014-00730
`Patent 7,584,071
`
`
`Petitioners Parrot S.A and Parrot, Inc. (collectively, “Parrot” or “Petitioner”)
`
`file this Motion pursuant to 37 C.F.R. § 42.104(c) to correct a clerical mistake
`
`made when assembling Exhibit 1010 of the petition in the instant IPR, namely, the
`
`inadvertent omission of Prof. Raffaello D’Andrea’s Curriculum Vitae referred to as
`
`“Appendix B” in his declaration. During a conference call on February 2, 2015,
`
`the Board authorized Petitioner to file this motion by February 9, 2015.
`
`A. Applicable Rule
`Pursuant to 37 C.F.R. § 42.104(c), “[a] motion may be filed that seeks to
`
`correct a clerical or typographical mistake in the petition. The grant of such
`
`motion does not change the filing date of the petition.”
`
`B.
`
`Facts Relevant to this Motion
`1.
`On May 6, 2014, Petitioner filed a petition requesting inter partes
`
`review of U.S. Patent No. 7,584,071 (“the ’071 Patent”) in the instant IPR. On
`
`May 9, 2014, the petition was accorded a filing date of May 6, 2014. Paper 3.
`
`Patent Owner filed a preliminary response, and, on October 28, 2014, the Board
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`instituted trial with respect to all claims of the ’071 Patent.
`
`2.
`
`Prior to filing the IPR petition and its exhibits, the paralegal staff
`
`and/or other attorneys on Petitioner’s counsel’s team collected the PDF files that
`
`would eventually be assembled into the final exhibits in various shared folders on
`
`Osha Liang LLP’s file system. Exh. 1012 (Decl. of Deborah Skolaski), at ¶¶ 2-3.
`
`1
`
`
`
`Case IPR2014-00730
`Patent 7,584,071 B2
`These materials included, among other things, Prof. Raffaello D’Andrea’s CV,
`
`which was supposed to be attached to Prof. D’Andrea’s declaration as “Appendix
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`B” in the final exhibit. Exh. 1012 at ¶ 3. Although a copy of Prof. D’Andrea’s CV
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`was received and saved in a shared folder prior to PRPS filing, due to a clerical
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`mistake during the assembly of Exhibit 1010, the PDF file of the CV was
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`inadvertently not included in the exhibit. Exh. 1012 at ¶ 4; Exh. 1013 (Decl. of
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`James Hopenfeld) at ¶ 4. This error was unintentional and Petitioner’s counsel
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`discovered the error in January 2015, while preparing for Prof. D’Andrea’s
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`deposition. Exh. 1012 at ¶ 4; Exh. 1013 at ¶¶ 4-5; and Exh. 1014 (Decl. of
`
`Prof.Raffaello D’Andrea) at ¶ 2.
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`3.
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`Upon discovering the error and after receiving a letter from Patent
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`Owner’s counsel regarding another clerical error in a similar exhibit in related
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`proceeding IPR2014-00732, a corrected Exhibit 1010 was prepared, which
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`includes the copy of the PDF file of Prof. D’Andrea’s CV at “Appendix B” to his
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`declaration, a new exhibit label to the front page, and additional page-numbering
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`on the attachments to the declaration for ease of reference. Exh. 1012 (Skolaski) at
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`¶ 5, Exh. 1013 (Hopenfeld) at ¶ 5, Exh. 1014 (D’Andrea) at ¶¶ 2-3. Petitioner
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`served corrected Exhibit 1010 on Drone’s counsel on Monday, January 26, 2015.
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`Exh. 1012 (Skolaski) at ¶ 5, Exh. 1013 (Hopenfeld) at ¶ 5.
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`C. Relief Requested
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`2
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`
`
`Case IPR2014-00730
`Patent 7,584,071 B2
`Petitioner requests that Exhibit 1010 be replaced with corrected Exhibit
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`1010, a copy of which has been filed with this Motion and which includes Prof.
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`D’Andrea’s CV, and that the filing date of the petition remain unchanged.
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`D. Requested Relief has No Substantial Substantive Effect on Proceeding
`“[W]hen determining whether to grant a motion to correct a petition, the
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`Board will consider any substantial substantive effect, including any effect on the
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`patent owner’s ability to file a preliminary response.” 77 Fed. Reg. 48680, 48699.
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`Petitioner respectfully submits that filing a replacement for Exhibit 1010 with the
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`CV, which is cited as “Appendix B” within the declaration, will have no
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`substantial substantive effect on the proceeding and did not materially prejudice
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`the Patent Owner. Exhibit 1010 expressly cites Prof. D’Andrea’s CV, Patent
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`Owner timely filed its Preliminary Response without raising the error as an issue
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`with the Board or Petitioner, and Prof.D’Andrea’s qualifications are not in dispute.
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`In view of the foregoing, Petitioner asks that this motion be granted.
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`Dated: February 9, 2015
`
`
`Respectfully submitted,
`/Tammy J. Terry/
`James E. Hopenfeld (Reg No. 47,661)
`Hopenfeld@oshaliang.com
`Tammy J. Terry (Reg No. 69,167)
`Terry@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713-228-8600/Fax: 713-228-8778
`Counsel for Petitioner
`
`3
`
`
`
`Case IPR2014-00730
`Patent 7,584,071 B2
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6 on the Patent
`
`Owner by email and U.S. Mail a copy of this Motion to Correct Exhibit to Petition
`
`for Inter Partes Review pursuant to 37 C.F.R. § 42.104(c) and supporting materials
`
`as follows:
`
`Gene Tabachnick
`James Dilmore
`gtabachnick@beckthomas.com
`jdilmore@beckthomas.com
`docket@beckthomas.com
`BECK & THOMAS, P.C.
`1575 McFarland Road, Suite 100
`Pittsburgh, PA 15216-1808
`
`Respectfully submitted,
`
`Dated: February 9, 2015
`
`/Tammy J. Terry/
`
`James E. Hopenfeld (Reg No. 47,661)
`Hopefeld@oshaliang.com
`Tammy J. Terry (Reg No. 69,167)
`Terry@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713-228-8600/Fax: 713-228-8778
`Counsel for Petitioner
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