Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 27
` Entered: October 20, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PARROT S.A. and PARROT, INC.,
`Petitioner,
`
`v.
`
`DRONE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`Motion to Correct Exhibit 1011
`37 C.F.R. § 42.104(c)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 27
` Entered: October 20, 2015
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PARROT S.A. and PARROT, INC.,
`Petitioner,
`
`v.
`
`DRONE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`Motion to Correct Exhibit 1011
`37 C.F.R. § 42.104(c)
`
`
`
`
`
`
`
`IPR2014-00732
`Patent 8,106,748 B2
`
`
`Petitioner has filed an authorized motion to correct Exhibit 1011 pursuant to
`37 C.F.R. § 42.104(c). Paper 14 (“Mot.”). Patent Owner opposes the motion to
`correct. Paper 16 (“Opposition”). Petitioner has replied to the opposition. Paper
`17 (“Reply”).
`The Board’s rules allow for the correction of clerical mistakes in a petition.
`Specifically, 37 C.F.R. § 42.104(c) provides: “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.” “[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.” Changes to Implement Inter Partes Review
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`Covered Business Method Patents; Final Rule, 77 Fed. Reg. 48,680, 48,699 (Aug.
`14, 2012).
`Petitioner filed its Petition (Paper 1) in this proceeding on May 6, 2014.
`Petitioner filed, as part of its petition, Exhibit 1011, the Declaration of Dr.
`Raffaello D’Andrea, which referenced Dr. D’Andrea’s Curriculum Vitae as being
`attached to the Declaration as “Appendix B.” The CV is not found in Exhibit
`1011. Further, the signature page of the Declaration, at the bottom, contains the
`language “Regarding U.S. Patent No. 7,584,071” and the notation “Petitioner
`Parrot – Ex. 1010.” Ex. 1011, 2. We observe that a Declaration by Dr. D’Andrea
`was submitted as Exhibit 1010 in related Case IPR2014-00730, as part of a request
`for inter partes review of U.S. Patent No. 7,584,071 B2.
`
`
`
`2
`
`
`
`IPR2014-00732
`Patent 8,106,748 B2
`
`
`Petitioner submits that the errors in submission of the Declaration were
`unintentional and were discovered in January 2015, while preparing for (and
`during) Dr. D’Andrea’s deposition during trial. Mot. 2.
`Although copies of the correct signature page and the CV were received and
`placed in a shared electronic folder prior to PRPS filing, the wrong signature page
`was attached and the PDF file of the CV was inadvertently not included in the
`Exhibit. Mot. 2; Ex. 1014 ¶¶ 4–5 (Declaration of lead counsel); Ex. 1013 ¶¶ 3–6
`(Declaration of law firm’s lead paralegal). Scanned, executed signature pages were
`received via email from Dr. D’Andrea for Exhibit 1011 in this proceeding and for
`Exhibit 1010 in related proceeding IPR2014-00730, with instructions to insert the
`signature pages into the final versions of the Declaration. Ex. 1013 ¶ 4. Due to an
`unintentional clerical mistake, the executed signature page for Exhibit 1010 in
`IPR2014-00730 was inserted as the signature page for Exhibit 1011 in this
`proceeding. Id. ¶ 6. In addition, Dr. D’Andrea’s CV was inadvertently not
`included in Exhibit 1011. Id.
`Dr. D’Andrea testifies that he signs “about 50 documents a week” and does
`not have specific recollection of signing any particular document. Ex. 1015 ¶ 3.
`But Dr. D’Andrea continues:
`
`
`I am the author of both declarations [in this and the related
`proceeding] supporting Petitioner’s IPR petitions . . . . Each
`declaration accurately reflects my testimony, and I understood that
`each declaration was submitted under oath and penalty of perjury. I
`know that I signed my declarations because I have seen the signature
`pages and they bear my signature. I also know that I scanned and
`3
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`IPR2014-00732
`Patent 8,106,748 B2
`
`
`emailed my signature pages to Petitioner’s counsel on or about April
`30, 2014, because I have recently seen the email to which I attached
`the copies of my signature pages.
`
`Id. ¶ 4.
`Attached to Dr. D’Andrea’s Exhibit 1015 Declaration is a copy of an email
`that purports to be from Dr. D’Andrea addressing Petitioner’s lead counsel, and
`dated Wednesday April 30, 2014. Ex. 1015, 7 (“Attachment A”). The email
`contains the following relevant statements from Dr. D’Andrea: “Here are the
`signed forms. I have not had a chance to go over the documents one more time,
`but really, at this stage, it should only be typos and organizational.” Id.
`Petitioner requests that Exhibit 1011 be replaced with corrected Exhibit
`1011 (filed Feb. 9, 2015), which includes the correct signature page and the CV.
`Mot. 2.
`Patent Owner’s Opposition discusses weight and admissibility of Dr.
`D’Andrea’s Declaration and alleged discrepancies with respect to Exhibit 1015 and
`the email purported to be from Dr. D’Andrea. The Opposition, however, does not
`address, or otherwise respond to, the apparent inadvertent errors of failing to
`upload the CV and uploading the wrong signature page. Patent Owner does not
`provide a substantive dispute with respect to any of the assertions regarding failure
`to upload the CV and correct signature page that Petitioner makes in its motion.
`Nor does Patent Owner argue that failure to include the CV and correct signature
`page with the Declaration had any substantial substantive effect on this proceeding,
`such as affecting Patent Owner’s ability to file a preliminary response. We are
`
`
`
`4
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`
`
`IPR2014-00732
`Patent 8,106,748 B2
`
`persuaded that the failure to upload the CV and correct signature page with Exhibit
`1011 was a clerical or typographical mistake and the type of action that may be
`corrected under 37 C.F.R. § 42.104(c). Accordingly, Petitioner’s motion to correct
`Exhibit 1011 is granted.
`
`It is
`ORDERED that Petitioner’s motion to correct Exhibit 1011 is
`
`granted; and
`
`FURTHER ORDERED that Corrected Exhibit 1011 (filed Feb. 9,
`2015) replaces original Exhibit 1011.
`
`
`
`
`5
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`
`
`IPR2014-00732
`Patent 8,106,748 B2
`
`For Petitioner:
`James E. Hopenfeld
`Tammy J. Terry
`OSHA LIANG LLP
`hopenfeld@oshaliang.com
`terry@oshaliang.com
`
`For Patent Owner:
`
`Gene Tabachnick
`James Dilmore
`BECK & THOMAS, P.C.
`gtabachnick@beckthomas.com
`jdilmore@beckthomas.com
`
`
`
`
`
`
`
`6
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