`
`Trials@uspto.gov Paper 21
`571-272-7822
`
`Entered: March 6, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOSO NORTH AMERICA, INC. and MOSO INTERNATIONAL B.V.,
`Petitioners,
`
`v.
`
`DASSO INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2019-00184
`Patent 8,709,578 B2
`____________
`
`
`
`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`DERRICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Granting Patent Owner’s Motion to Correct Clerical Errors
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00184
`Patent 8,709,578 B2
`
`
`Dasso International, Inc. (“Patent Owner”) filed a Motion to Correct
`Clerical Errors in Preliminary Response. Paper 20 (“Motion” or “Mot.”).
`Specifically, Patent Owner seeks authorization to file a corrected version of
`the Preliminary Response (Paper 19, “Prelim. Resp.”) that faithfully quotes
`the final certified English translation of Chinese Patent Application No.
`200610021013.2 to Helin Li, filed as Exhibit 2003. Mot. 1. Patent Owner
`supports the Motion with a redline version of pages 11, 12, and 14 of the
`Preliminary Response (Ex. 2005).
`As Patent Owner explains, Patent Owner filed its Preliminary
`Response with a new English translation of Li,1 which was one of
`Petitioners’ prior art references. Mot. 1. Patent Owner further explains that
`a working draft of the translation was used during Patent Owner’s drafting
`of the Preliminary Response, which included certain phrases that did not
`precisely match the phrases found in the final certified English translation of
`Li, filed as Exhibit 2003. Id. at 1–2.
`Patent Owner contends that the proposed changes relate to clerical
`errors that it did not identify prior to filing, that it promptly sought
`correction, and that correction will not prejudice Petitioners. Id. at 4–6; see
`also id. at 1–2 (detailing the actions Patent Owner took after discovering the
`errors to inform Petitioners and to seek authorization to file its motion).
`Patent Owner further represents that Petitioners MOSO North America, Inc.
`and MOSO International B.V. do not oppose the Motion. Id. at 1.
`
`
`1 Petitioners filed their version of the reference as “Li” (Ex. 1004). Mot. 1.
`Patent Owner refers to Petitioners’ version as “Li (Morningside)” (Prelim.
`Resp. 10), and to its version, submitted as Exhibit 2003, as “Li (Sun)” (id.).
`
`2
`
`
`
`IPR2019-00184
`Patent 8,709,578 B2
`
`
`Having considered the Motion and supporting exhibit, we grant Patent
`Owner’s Motion to correct the errors identified in the Preliminary Response.
`In this case, Petitioners do not oppose the motion, no prejudice to
`Petitioners has been called to our attention, and error correction is consistent
`with the efficient administration of the case. See, e.g., 37 C.F.R. 42.1(b)
`(dictating that Part 42 of 37 C.F.R. “shall be construed to secure the just,
`speedy and inexpensive resolution of every proceeding”). Furthermore,
`under 37 C.F.R. § 42.5(a), “[t]he Board may determine a proper course of
`conduct in a proceeding for any situation not specifically covered by this
`part and may enter non-final orders to administer the proceeding.” Under
`the facts and circumstances of this case, we determine that allowing
`correction is the proper course of action.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion (Paper 20) is GRANTED;
`
`and
`
`FURTHER ORDERED that Patent Owner file a Corrected
`Preliminary Response as a Paper titled Corrected Preliminary Response
`within five business days of the date of this Order.
`
`
`
`3
`
`
`
`IPR2019-00184
`Patent 8,709,578 B2
`
`PETITIONER:
`Thomas G. Pasternak
`John M. Schafer
`AKERMAN LLP
`thomas.pasternak@akerman.com
`jay.schafer@akerman.com
`
`PATENT OWNER:
`Thomas H. Kramer
`O’KELLY ERNST & JOYCE, LLC
`tkramer@oelegal.com
`
`Gerard O’Rourke
`O’ROURKE LAW OFFICE, LLC
`gorourke@orourkefirm.com
`
`4
`
`
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