`Tel: 571-272-7822
`
`
`Paper 11
`Entered: April 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`ENDOHEART AG,
`Patent Owner.
`_______________
`
`Case IPR2016-00299 (Patent 8,182,530 B2)
` Case IPR2016-00300 (Patent 8,182,530 B2)1
`_______________
`
`
`
`Before LORA M. GREEN, RAMA G. ELLURU,
`and ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Decision addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Decision that has been
`entered in each case. The parties are not authorized to use this style caption
`unless otherwise instructed by the Board.
`
`
`
`Case IPR2016-00299 (Patent 8,182,530 B2)
`Case IPR2016-00300 (Patent 8,182,530 B2)
`
`
`On March 22, 2016, Petitioner filed motions under 37 C.F.R.
`§ 42.104(c) to correct information related to the Real Party-in-Interest
`section of its Petition. Paper 9.2 Petitioner’s motions were accompanied by
`Replacement Petitions. Ex. 1043 of IPR2016-00299; Ex. 1045 of IPR2016-
`00300. On April 5, 2016, Patent Owner responded with papers styled as
`Patent Owner’s Response to Petitioner’s Motion to Correct Petition. Paper
`11.
`
`Petitioner contends that, in the course of preparing its petition, its
`counsel made a clerical error resulting in the identification of Edwards
`Lifesciences LLC as the parent of Edwards Lifesciences Corp. when, in fact,
`the Edwards Lifesciences Corp. is the parent entity. See, e.g., Paper 9, at 2;
`Exs. 1044, 1045. Petitioner therefore requests permission to file a corrected
`Petition correctly identifying the relationship between the two parties entities
`identified as Real Parties-in-Interest.
`Patent Owner questions whether, under Japanese Foundation for
`Cancer Research v. Lee, 773 F.3d 1300, 1307 (Fed. Cir. 2014), counsel’s
`error is properly construed as a clerical error, but ultimately does not oppose
`the motion. Paper 11, at 2–3 & n.1. We do not find Patent Owner’s case
`citation probative as it relates to whether the USPTO acted within its
`discretion to refuse to withdraw an erroneously-filed terminal disclaimer, as
`opposed to whether the content of that filing contained a clerical error. See,
`e.g., Japanese Found., 773 F.3d at 1306 (“Here, the Foundation has not
`identified an error in the patent number or application that is apparent on its
`
`
`2 Except as otherwise indicated, we cite herein to the papers filed in
`IPR2016-00299.
`
` 2
`
`
`
`
`
`
`
`Case IPR2016-00299 (Patent 8,182,530 B2)
`Case IPR2016-00300 (Patent 8,182,530 B2)
`
`face—like a transposed number or the number of a related patent—which
`would entail redirecting the disclaimer to the correct target. It instead claims
`that the filing of the disclaimer was itself the ‘clerical or typographical error’
`. . . .”). Although Patent Owner suggests that the error here cannot be
`“clerical” because it was made by counsel rather than by a paralegal or
`office clerk (Paper 11, at 2), we note that the court in Japanese Foundation
`applied the term to a situation in which “patentee’s attorney of record
`mistakenly entered the serial number and filing date of an issued patent,
`rather than the application for which he had intended to file a disclaimer.”
`Japanese Found., 773 F.3d at 1305, 1306 (citing Carnegie Mellon Univ. v.
`Schwartz, 105 F.3d 863 (3d Cir.1997)).
`Patent Owner also opposes any attempt by Petitioner to correct the
`Petition to add Edwards Lifesciences PVT as an additional real party-in-
`interest. Paper 11, at 3. With respect to the motion at issue, however,
`Petitioner has not argued that any such omission exists, nor that the alleged
`omission should be corrected. Accordingly, we do not address this issue
`here.
`
`In view of the above, we grant Petitioner’s motions.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Motions to Correct Petition under
`37 C.F.R. § 42.104(c) are granted;
`FURTHER ORDERED that Exhibit 1043 (in IPR2016-00299) and
`Exhibit 1045 (in IPR2016-00300) shall be substituted for the respective
`original petitions uploaded on December 9, 2015, and granted a filing date
`
` 3
`
`
`
`
`
`
`
`Case IPR2016-00299 (Patent 8,182,530 B2)
`Case IPR2016-00300 (Patent 8,182,530 B2)
`
`of December 9, 2015. The original petitions shall be expunged from the
`record.
`
`PETITIONER:
`W. Todd Baker
`CPDocketBaker@oblon.com
`
`Ruby J. Natnithithadha
`CPDocketRJN@oblon.com
`
`Jeremy B. Barton
`CPDocketBarton@oblon.com
`
`Brian P. Egan
`began@mnat.com
`
`Catherine Nyarady
`cnyarady@paulweiss.com
`
`
`
`PATENT OWNER:
`Edward M. Arons
`earons@weissarons.com
`
`Joel Weiss
`jweiss@weissarons.com
`
`
`
` 4
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