Trials@uspto.gov
`571.272.7822
`
` Paper No. 11
`Entered: October 3, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`ONO PHARMACEUTICAL CO., LTD. and TASUKU HONJO,
`Patent Owner.
`____________
`
`Case IPR2016-01217 (Patent 9,067,999)
`Case IPR2016-01218 (Patent 9,067,999)
`Case IPR2016-01219 (Patent 9,073,994)
`Case IPR2016-01221 (Patent 9,073,994)1
`____________
`
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Correct Clerical Errors
`37 C.F.R. § 42.104(c)
`
`1 This order addresses issues that are common to all four cases. We,
`therefore, issue a single order that has been entered in each case. The parties
`may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`

`
`IPR2016-01217 (Patent 9,067,999); IPR2016-01218 (Patent 9,067,999)
`IPR2016-01219 (Patent 9,073,994); IPR2016-01221 (Patent 9,073,994)
`
`
`
`INTRODUCTION
`
`I.
`
`Pursuant to authorization from the Board, Merck Sharp & Dohme
`
`Corp. (“Petitioner”) filed a motion to correct clerical errors in the Petition in
`
`each of the above-referenced proceedings. Paper 8 (“Mot.”).2 Ono
`
`Pharmaceutical Co. Ltd. and Tasuko Honjo (collectively, “Patent Owner”)
`
`oppose Petitioner’s motions. Paper 9 (“Opp’n”).
`
`Having considered the arguments of both sides, we grant Petitioner’s
`
`motions to correct the Petitions and extend the deadline for Patent Owner to
`
`file its Patent Owner Preliminary Responses to October 26, 2016, in each of
`
`the proceedings.
`
`II.
`
`BACKGROUND
`
`On June 29, 2016, Petitioner filed two petitions for inter partes review
`
`of U.S. Patent No. 9,067,999 (IPR2016-01217 and IPR2016-01218), and
`
`one petition for inter partes review of U.S. Patent No. 9,073,994 (“the ’994
`
`patent”) (IPR2016-01219). On June 30, 2016, Petitioner filed another
`
`petition for inter partes review of the ’994 patent (IPR2016-01221).
`
`On June 30, 2016, Petitioner sent Patent Owner an e-mail
`
`correspondence identifying certain alleged clerical errors in each of the four
`
`petitions filed. Ex. 1112, 1–4. On July 26, 2016, Petitioner sent another e-
`
`mail correspondence to Patent Owner, providing a table explaining why each
`
`identified error was clerical, and identifying several additional
`
`“typographical errors” discovered during the process of preparing the table.
`
`Ex. 1114, 1–14. On August 11, 2016, Petitioner sent Patent Owner redlined
`
`
`
`2 Because similar papers were filed in each proceeding, paper numbers refer
`to those filed in IPR2016-01217, unless stated otherwise.
`
`2
`
`

`
`IPR2016-01217 (Patent 9,067,999); IPR2016-01218 (Patent 9,067,999)
`IPR2016-01219 (Patent 9,073,994); IPR2016-01221 (Patent 9,073,994)
`
`versions of each petition, showing the proposed corrections to address the
`
`various errors. Ex. 1115.
`
`III. ANALYSIS
`
`Under 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
`
`a motion does not change the filing date of the petition.” We also keep in
`
`mind that we construe our rules “to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b).
`
`In its motions, Petitioner explains why each item that it seeks to
`
`modify amounts to a typographical mistake. Mot. 2–3. Broadly speaking,
`
`most of the items addressed relate to the listing of claims in certain headings
`
`and in the body of the Petitions.3 Id. Petitioner asserts that it is evident from
`
`other portions of the Petition that those items represent typographical
`
`mistakes. Id. For example, Correction 2 in IPR2016-01217 inadvertently
`
`included claim 7 in the identification of ground (ii). Id. at 2 (citing Ex.
`
`1111, 4). Petitioner explains, however, that the error is clear from other
`
`portions of the Petition that discuss claim 7 in the context of the references
`
`asserted in ground (iii) rather than ground (ii). Id. Similarly, Corrections 3–
`
`7 seek to correct the inadvertent omission of claims 24 and 25, which relate
`
`to lung cancers expressing PD-L1 or PD-L2. Id. at 2–3. Petitioner asserts
`
`that the typographical error is clear because all but one of the corrections
`
`falls under or refers to Section V.B.7, which expressly identifies claims 24
`
`and 25 along with claims 19 and 20, which relate to essentially the same
`
`
`
`3 Other proposed corrections include deleting the “Statement of Material
`Facts” from the Table of Contents (IPR2016-01217, Paper 9, 2) and
`correcting internal cross-references to sections that do not exist (IPR2016-
`01219, Paper 9, 3) or that are incorrect (IPR2016-01221, Paper 9, 3).
`
`3
`
`

`
`IPR2016-01217 (Patent 9,067,999); IPR2016-01218 (Patent 9,067,999)
`IPR2016-01219 (Patent 9,073,994); IPR2016-01221 (Patent 9,073,994)
`
`subject matter. See Ex. 1111, 51 (“WO557 Anticipates Claims 19-20 and
`
`24-25”). Finally, Petitioner argues that there is no prejudice to Patent Owner
`
`because Patent Owner received prompt notice of the errors, and the errors
`
`are obvious from the Petition itself. Mot. 2.
`
`In response, Patent Owner argues that Petitioner has not met its
`
`burden to show that the requested corrections are clerical or typographical,
`
`as opposed to substantive in nature, because altering the challenged claims is
`
`a core substantive issue. Opp’n 1–2. Moreover, Patent Owner asserts that
`
`Petitioner’s reference to other portions of the Petition fails to prove the
`
`errors are clerical, because there is no way to identify which of the
`
`contradictory lists is correct. Id. at 2. Patent Owner contends that allowing
`
`Petitioner to correct its errors would “encourage parties to file partially
`
`inadequate petitions, and effectively truncate the scant 3-months allotted to
`
`Patent Owners to prepare a preliminary response.” Id. Thus, as an
`
`alternative, Patent Owner requests that it be given an additional month to
`
`prepare its Preliminary Responses to compensate for the time lost before
`
`Petitioner sent the full set of correct petitions on July 26.
`
`As an initial matter, we agree with the well-reasoned analysis in ABB
`
`Inc. v. ROY-G-BIV Corp. that Rule 104(c) is “remedial in nature and is
`
`therefore entitled to a liberal interpretation.” IPR2013-00063, slip op. at 7
`
`(PTAB Jan. 16, 2013) (Paper 21) (citing Tcherepnin v. Knight, 389 U.S.
`
`332, 336 (1967)). In this light, we determine that allowing Petitioner to
`
`correct the errors is appropriate under the facts and circumstances of these
`
`proceedings. Although we do not intend to encourage careless work, we are
`
`persuaded by Petitioner’s explanations as to why the errors were inadvertent
`
`typographical errors. Moreover, we find any prejudice to Patent Owner to
`
`4
`
`

`
`IPR2016-01217 (Patent 9,067,999); IPR2016-01218 (Patent 9,067,999)
`IPR2016-01219 (Patent 9,073,994); IPR2016-01221 (Patent 9,073,994)
`
`be relatively minor, as Petitioner promptly notified Patent Owner of the
`
`errors.
`
`Given the number of proposed corrections to the Petitions, however,
`
`we also determine that additional time to respond to the Petitions is
`
`warranted. Because Petitioner provided Patent Owner with all of the
`
`proposed revisions on July 26, we extend the deadline by which Patent
`
`Owner may file its Preliminary Responses until October 26, 2016.
`
`IV. CONCLUSION
`
`For the reasons discussed above, we conclude that Petitioner has
`
`demonstrated that the proposed corrections in each of its Petitions are
`
`typographical in nature pursuant to 37 C.F.R. § 104(c).
`
`V. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Motion to Correct Clerical Errors is
`
`granted in each proceeding;
`
`FURTHER ORDERED that Petitioner shall file by October 10, 2016
`
`a Corrected Petition in each proceeding, limited to correcting the items
`
`identified in its Motions;
`
`FURTHER ORDERED that the filing of the Corrected Petitions will
`
`not change the filing date accorded to the relevant Petition in each
`
`proceeding; and
`
`FURTHER ORDERED that Patent Owner’s Preliminary Response to
`
`each Petition shall be due on October 26, 2016.
`
`5
`
`
`
`

`
`IPR2016-01217 (Patent 9,067,999); IPR2016-01218 (Patent 9,067,999)
`IPR2016-01219 (Patent 9,073,994); IPR2016-01221 (Patent 9,073,994)
`
`
`6
`
`
`
`PETITIONER:
`
`Jeffrey Kushan
`IPRNotices@sidley.com
`
`Peter Choi
`Peter.choi@sidley.com
`
`
`
`PATENT OWNER:
`
`Eldora Ellison
`eellison@skgf.com
`
`Jeremiah Frueauf
`Jfrueauf-ptab@skgf.com
`
`David Holman
`Dholman-ptab@skgf.com
`
`David Roadcap
`Droadcap-ptab@skgf.com