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 IPR2014-00732
`U.S. Patent No. 8,106,748
`
`
`
`
`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 IPR2014-00732
`U.S. Patent No. 8,106,748
`
`
`
`
`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 IPR2014-00732
`Patent 8,106,748 B2
`
`
`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
`
`Ex. 1011
`
`U.S. Patent No. 8,106,748 (“the ’748 Patent”)
`
`U.S. Patent No. 5,043,646 (“Smith”)
`
`French Patent No. 9901683 to Potiron
`
`Certified Translation of French Patent No. 9901683
`(“Potiron”)
`
`U.S. Pat. Pub. No. 2006/10144994 A1 (“Spirov”)
`
`EXHIBIT INTENTIONALLY LEFT BLANK
`
`U.S. Pat. No. 7,219,861 (“Barr”)
`
`U.S. Pat. No. 6,751,529 (“Fouche”)
`
`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. 1011, Att. A U.S. Patent No. 613,809 to Tesla (“Tesla”)
`
`Ex. 1011, Att. B U.S. Patent No. 3,101,569 to Giardina (“Giardina”)
`
`Ex. 1011, Att. C U.S. Patent No. 8,072,417 (“Jouanet”)
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`
`
`Claim Chart Demonstrating Invalidity of the ’748 Patent
`
`Declaration of Deborah A. Skolaski
`
`Declaration of James E. Hopenfeld
`
`Declaration of Prof. Raffaello D’Andrea
`
`i
`
`
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`
`
`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 clerical mistakes in
`
`Exhibit 1011 in this IPR, namely, the inadvertent inclusion of the wrong signature
`
`page and omission of “Appendix B.” 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 the petition 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
`
`instituted trial with respect to all claims of the ’748 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. 1013 (Decl. of D. Skolaski) at ¶¶ 2-3. These
`
`materials included, among other things, (1) the signature page to Prof. D’Andrea’s
`
`declaration, and (2) his CV, which was supposed to be attached to the declaration
`
`1
`
`
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`as “Appendix B” in the final exhibit. Exh. 1013 at ¶ 3. Although copies of the
`
`signature page and CV were collected prior to filing in PRPS, due to a clerical
`
`mistake during the assembly of Exhibit 1011, the wrong signature page was
`
`attached and the PDF file of the CV was inadvertently not included in the exhibit.
`
`Exh. 1013 at ¶¶ 3-6; Exh. 1014 (Decl. of J. Hopenfeld) at ¶¶ 4-5. This error was
`
`unintentional and Petitioner’s counsel discovered the errors in January 2015, while
`
`preparing for and during Prof. D’Andrea’s deposition. Exh. 1013 at ¶ 6; Exh. 1014
`
`at ¶ 6; and Exh. 1015 (Decl. of R. D’Andrea) at ¶ 6.
`
`3.
`
`Upon discovering the errors and after receiving a letter from Patent
`
`Owner’s counsel regarding the signature page, a corrected Exhibit 1011 was
`
`prepared, which includes the correct signature page, the copy of the PDF file of
`
`Prof. D’Andrea’s CV at “Appendix B” to his declaration, a new exhibit label on
`
`the exhibit, and additional page-numbering on the attachments to the declaration
`
`for ease of reference. Exh. 1013 (Skolaski) at ¶ 7; Exh. 1014 (Hopenfeld) at ¶ 6;
`
`Exh. 1015 (D’Andrea) at ¶ 7. Petitioner served corrected Exhibit 1011 on Drone’s
`
`counsel on Monday, January 26, 2015. Exh. 1013 at ¶ 7, Exh. 1014 at ¶ 6.
`
`C. Relief Requested
`Petitioner requests that Exhibit 1011 be replaced with its corrected exhibit, a
`
`copy of which has been filed with this motion and which includes the correct
`
`signature page and CV, and that the petition retain its original filing date.
`
`2
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`
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`D. Requested Relief has No Substantial Substantive Effect on Proceeding
`“[W]hen determining whether to grant a motion to correct a petition, the
`
`Board will consider any substantial substantive effect, including any effect on the
`
`patent owner’s ability to file a preliminary response.” 77 Fed. Reg. 48680, 48699.
`
`Petitioner respectfully submits that filing a replacement for Exhibit 1011 with the
`
`correct signature page and CV will have no substantial substantive effect on the
`
`proceeding and did not materially prejudice the Patent Owner. The evidence
`
`shows that Prof. D’Andrea signed his declaration and intended for the correct
`
`signature page and CV to be included with his declaration, and that the clerical
`
`errors in the exhibit assembly were unintentional. Exh. 1015 (D’Andrea) at ¶¶ 1-7;
`
`Exh. 1013(Skolaski) at ¶¶ 3-6; Exh. 1014(Hopenfeld) at ¶¶ 3-6. Moreover, Patent
`
`Owner timely filed its Preliminary Response without raising the errors as issues
`
`with the Board or Petitioner, and Prof. D’Andrea’s qualifications are not in dispute.
`
`In view of the foregoing, Petitioner asks that this motion be granted.
`
`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 IPR2014-00732
`Patent 8,106,748 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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