`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`ENDOHEART AG,
`Patent Owner.
`____________
`
`Case IPR2016-00300
`Patent 8,182,530 B2
`____________
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`CORRECT PETITION
`
`37 C.F.R. § 42.104(c)
`
`
`
`
`
`
`
`
`
`IPR2016-00300
`
`Patent Owner respectfully files this response to Petitioner’s motion under 37
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`C.F.R. § 42.104(c), filed March 22, 2016, to correct an alleged “clerical error” in the
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`Petition.
`
`I. Authorization For This Paper
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`In its order dated March 8, 2016, the Board authorized Patent Owner to file
`
`this paper responding to Petitioner’s motion under 37 C.F.R. § 42.104(c). Paper 7.
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`II. Relationship Between Named Entities
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`In its motion, Petitioner asserts that “Edwards’ counsel made a clerical error
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`by inadvertently mis-transcribing that Edwards Lifesciences, LLC is the parent
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`company of Edwards Lifesciences Corporation.” Mot. at 2 (emphasis
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`added). Although Patent Owner questions whether Federal Circuit precedent
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`supports an interpretation of “clerical error” that would excuse a mistake by a
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`“Senior Attorney” (Ruby J. Natnithithadha) and signed by a “Partner” (W. Todd
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`Baker), rather than by a paralegal or office clerk1, Patent Owner does not oppose
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`1 Japanese Found. for Cancer Research v. Lee, 773 F.3d 1300, 1307 (Fed. Cir. 2014)
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`(interpreting the identical phrase “clerical error” in 35 U.S.C. § 255 as “relating to
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`an office clerk or office work” and “when a subordinate acts contrary to binding
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`instructions,” and thus denying correction where an erroneous filing was signed by
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`the “attorney of record” because “it would be impossible for a subordinate who lacks
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`the duty of exercising judgment to file a valid terminal disclaimer on his own”). Cf.
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`
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`2
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`
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`IPR2016-00300
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`entry of the Replacement Petition (Ex. 1043) into the public record. Patent Owner
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`believes that the public interest is better served by having an accurate and complete
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`record of Petitioner’s corporate relationships.
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`III. Failure to Name Edwards Lifesciences PVT
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`In its motion, Petitioner maintains there are “two real parties-in-interest,”
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`namely, Edwards Lifesciences Corporation and Edwards Lifesciences LLC. Mot.
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`at 2 (emphasis added). Petitioner does not allege that its omission of a third real
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`party-in-interest was a clerical error, nor that the omission should be corrected. (In
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`its preliminary response, Patent Owner has presented evidence and argument to
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`satisfy its burden of production that Edwards Lifesciences PVT is an unnamed real
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`party-in-interest in this proceeding. See Ex. 2008; Ex. 2018-2024; IPR2016-00299
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`Prelim. Resp. at 51-53.)
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`Patent Owner opposes any correction of the omission under 37 C.F.R.
`
`Respectfully submitted,
`
`/s/ Edward M. Arons
`Edward M. Arons
`Reg. No. 44,511
`Attorney for Patent Owner
`Endoheart AG
`
`§ 42.104(c).
`
`
`
`
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`Date: April 5, 2016
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`
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`
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`37 C.F.R. § 42.6(a)(3) (attorney signature requirements for inter partes reviews).
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`
`
`3
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`
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`IPR2016-00300
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the PATENT OWNER’S
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`RESPONSE TO PETITIONER’S MOTION TO CORRECT PETITION was
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`served on the 5th day of April, 2016, via FEDEX EXPRESS ® directed to counsel of
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`record for the Petitioner: W. Todd Baker (Reg. No. 45,265)
`1940 Duke Street
`Alexandria, Virginia 22314
`Telephone: 703‐412‐6383
`Facsimile: 703‐413‐2220
`
`Oblon, McClelland, Maier and Neustadt, L.L.P.
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`
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`
`
`/s/ Edward M. Arons
`Edward M. Arons
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`
`
`4
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