Trials@uspto.gov
`571-272-7822
`
`Paper 18
`Entered: February 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ELECTION SYSTEMS & SOFTWARE, LLC,
`Petitioner,
`v.
`HART INTERCIVIC, INC.,
`Patent Owner.
`
`PGR2020-00031
`Patent 10,445,966 B1
`
`
`
`
`
`
`
`
`
`Before CHARLES J. BOUDREAU, AMANDA F. WIEKER, and
`JASON M. REPKO, Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 18
`Entered: February 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ELECTION SYSTEMS & SOFTWARE, LLC,
`Petitioner,
`v.
`HART INTERCIVIC, INC.,
`Patent Owner.
`
`PGR2020-00031
`Patent 10,445,966 B1
`
`
`
`
`
`
`
`
`
`Before CHARLES J. BOUDREAU, AMANDA F. WIEKER, and
`JASON M. REPKO, Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`PGR2020-00031
`Patent 10,445,966 B1
`
`I. SUMMARY
`This Order addresses (1) Petitioner’s request to “add claims 26 and 27
`to Ground 4 of the Petition” to address a Certificate of Correction that issued
`after we instituted post-grant review and (2) a request to increase the word
`limit for Petitioner’s Reply. Ex. 3003. For the reasons discussed here, we
`deny Petitioner’s request to “add claims 26 and 27 to Ground 4 of the
`Petition” because we decline to retroactively apply the Certificate of
`Correction in this proceeding. We, however, grant the requested increase of
`the word limit for Petitioner’s Reply by 750 words.
`II. THE CERTIFICATE OF CORRECTION
`Background
`A.
`We instituted a post-grant review of claims 1–30 of the ’966 patent.
`Paper 6, 47. All claims were challenged under 35 U.S.C. §§ 102 or 103,
`except for claims 26 and 27. Paper 1, 3 (“Pet.”). The Petition only
`challenged claims 26 and 27 based on 35 U.S.C. § 101, for ineligible subject
`matter, and 35 U.S.C. § 112, for indefiniteness. Id.
`With our authorization, Patent Owner filed a Motion for the Board to
`temporarily cede its exclusive jurisdiction over the patent for Patent Owner
`to request a Certificate of Correction for claim 26. Paper 10. In its Motion,
`Patent Owner argued that the requested correction would address a
`“typographical error” in claim 26 that is correctable under 35 U.S.C. § 255.
`Paper 10, 3 (Patent Owner’s Motion).
`In opposition to the Motion, Petitioner argued that filing a Motion to
`Amend instead of requesting a correction would promote “judicial
`efficiency” and avoid “substantial prejudice” to Petitioner. Paper 11, 7.
`Specifically, Petitioner argued that granting the Motion to cede jurisdiction
`would allow Patent Owner to use a Certificate of Correction to avoid the
`
`2
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`PGR2020-00031
`Patent 10,445,966 B1
`Petition’s indefiniteness challenge. Id. at 6. In Petitioner’s view, precluding
`Petitioner from fully challenging the corrected claim in this proceeding
`would be “severely prejudicial.” Id. As an alternative, Petitioner proposed
`that Patent Owner file a Motion to Amend to give Petitioner “the
`opportunity to fully address the unpatentability of the ‘corrected’ claims in
`this already pending proceeding.” Id. at 7.
`Patent Owner, however, declined to file a Motion to Amend, stating
`that such an amendment would “complicate these proceedings with the extra
`briefing and potential new grounds.” Paper 10, 10.
`On November 10, 2020, the Board granted the Motion to cede its
`jurisdiction to allow Patent Owner to request the Certificate of Correction
`from the Director. Paper 12. In the Order, the Board reminded Patent Owner
`that the due date to file a Motion to Amend in this proceeding was
`November 25, 2020. Id. at 4.
`On November 11, 2020, Patent Owner requested the Certificate of
`Correction from the Director. Ex. 2004 (Request for Certificate of
`Correction). The Certificate of Correction issued on December 15, 2020.
`Ex. 2015 (Certificate of Correction). Claim 26 originally recited, “The
`method of claim 25, wherein the data set wherein a candidate’s name, the
`data set combined with additional information related to the voter's vote
`selection to assist in identifying the voter's vote selection.” Ex. 1001, 11:23–
`26. The Certificate deleted “wherein the data set wherein” from claim 26 and
`inserted “wherein the data set includes.” Ex. 2015.
`In authorizing Patent Owner’s Motion, we requested that the parties
`“address whether the proposed certificate of correction to the ’966 patent, if
`issued, would have effect for only future cases or would have effect in this
`
`3
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`PGR2020-00031
`Patent 10,445,966 B1
`proceeding.” Paper 9, 3. In particular, 35 U.S.C. § 255 governs certificates
`involving a correction of an applicant’s mistake:
`Whenever a mistake of a clerical or typographical nature,
`or of minor character, which was not the fault of the Patent and
`Trademark Office, appears in a patent and a showing has been
`made that such mistake occurred in good faith, the Director may,
`upon payment of the required fee, issue a certificate of
`correction, if the correction does not involve such changes in the
`patent as would constitute new matter or would require
`reexamination. Such patent, together with the certificate, shall
`have the same effect and operation in law on the trial of actions
`for causes thereafter arising as if the same had been originally
`issued in such corrected form.
`(emphasis added). Section 254, concerning mistakes by the Office, contains
`similar language about the certificate’s effect. Interpreting section 254, the
`Federal Circuit has held that, “by necessary implication,” certificates of
`correction are not effective for “causes arising” before their issuance. Sw.
`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000).
`In its briefing on the issue, Patent Owner argued that this proceeding
`is not a “trial of actions for causes” under § 255. Paper 10, 6–8. In Patent
`Owner’s view, there are reasons to doubt whether the reasoning in Southwest
`Software applies to the Board’s proceedings:
`it is unclear what the “action for cause” would be in the context
`of a PTAB trial, nor is it clear when such cause would “arise.”
`This is a substantial distinction. If PTAB trials are not “trial[s] of
`actions for causes,” then there is no basis to distinguish between
`proceedings arising before or after the Certificate of Correction,
`and the logic of Southwest Software and H-W Tech.1 would thus
`not apply.
`Id. at 7–8.
`
`
`1 H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. 2014).
`
`4
`
`
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`PGR2020-00031
`Patent 10,445,966 B1
`Petitioner agrees with Patent Owner that the Certificate of Correction
`should apply retroactively here. See, e.g., Paper 11, 8. Petitioner, though,
`argues that “[j]udicial efficiency will only be promoted if [Petitioner] is
`permitted to fully address the patentability of the ‘corrected’ claim under any
`statutory ground in this proceeding.” Id.
`In an email to the Board on January 12, 2020, Petitioner made two
`requests related to the corrected claims:
`(1) authorization to add claims 26 and 272 to Ground 4 of the
`Petition and to address the ‘corrected’ language of those claims
`for the first time in the Reply; and (2) an extension of no more
`than 1,000 words to Petitioner’s Reply limited to ‘corrected’
`claims 26 and 27, such that any unused words of that 1,000 word
`extension could not be used in other sections of Petitioner’s
`Reply.
`Ex. 3003. In Ground 4 of the Petition, Petitioner asserts that claim 25, from
`which claims 26 and 27 depend, is obvious over Nadaf and Heilper. Pet. 71.
`On January 14, 2020, Judges Boudreau, Wieker, and Repko held a
`conference call with the parties to discuss Petitioner’s requests. Robert
`Evans and Michael Hartley were present for Petitioner, and Brian Oaks was
`present for Patent Owner.
`In the conference call, both parties argued that the Certificate of
`Correction should be given effect in this proceeding. To address the effect of
`the correction, Petitioner argued that it should be allowed to present new
`arguments in its Reply about the obviousness of the subject matter of
`corrected claims 26 and 27. Petitioner explained that no new references
`would be needed because the obviousness challenge to corrected claims 26
`
`
`2 Claim 27 depends from corrected claim 26, but the language of claim 27
`was unchanged by the Certificate of Correction. See Ex. 2015.
`
`5
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`PGR2020-00031
`Patent 10,445,966 B1
`and 27 would involve Nadaf and Heilper, which were presented originally in
`Ground 4 of the Petition. Petitioner also represented that it would not submit
`additional declaratory evidence related to corrected claims 26 and 27.
`Although Patent Owner agreed that the certificate should have effect
`in this proceeding, Patent Owner opposed Petitioner’s request to add the
`claims to Ground 4. Patent Owner argued that claims 26 and 27 are similar
`to claims 4 and 5, and so Petitioner could have presented obviousness
`challenges to claims 26 and 27 in the Petition, as it did for claims 4 and 5.
`Patent Owner argued that Petitioner’s request to “add claims 26 and 27 to
`Ground 4” would be a new challenge presented for the first time in the
`Reply, and there is insufficient time in this proceeding for adequate briefing
`on the resulting issues.
`
`B. Analysis
`Petitioner’s request to “add claims 26 and 27 to Ground 4 of the
`Petition” is denied because we decline to retroactively apply the Certificate
`of Correction in this proceeding. For the reasons discussed below,
`retroactive application would be inefficient at this late stage and could
`impede the Board’s ability to meet its statutory deadline to issue a Final
`Written Decision.
`As an initial matter, we note that there is value to the public in
`adjudicating the patentability of original claims 26 and 27, on the grounds
`originally presented in the Petition. For instance, the original claims still
`apply in a “trial of actions for causes arising before the certificate issued.”
`See Sw. Software, 226 F.3d at 1297. As for the retroactive application of the
`Certificate of Correction to this proceeding, Patent Owner questions whether
`a post-grant review is a “trial of actions for causes” under § 255. Paper 10,
`6–8. But we need not resolve that issue here. None of the authorities cited by
`
`6
`
`
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`PGR2020-00031
`Patent 10,445,966 B1
`the parties require the Board to give retroactive effect to the Certificate of
`Correction in this proceeding.
`For example, Patent Owner points to the Federal Circuit’s decision in
`Honeywell International, Inc. v. Arkema Inc., 939 F.3d 1345
`(Fed. Cir. 2019). Id. at 6–8. In Honeywell, the Federal Circuit concluded that
`the Board erred by not allowing patent owner to file for a certificate of
`correction. Honeywell, 939 F.3d at 1351. The Federal Circuit vacated the
`Final Written Decision and remanded to the Board so that it could authorize
`the patent owner’s motion to request a certificate of correction. Id. In Patent
`Owner’s view, “The Federal Circuit’s vacatur of the original Final Written
`Decision in Honeywell only makes sense if the Certificate of Correction at
`issue had the potential to impact that Final Written Decision.” Paper 10, 6
`(emphasis in original).
`Even if the Certificate of Correction in Honeywell had “the potential
`to impact the Final Written Decision,” the Federal Circuit did not hold that
`the Certificate must be given retroactive effect. Instead, in Honeywell, the
`Federal Circuit’s opinion focused on the boundary between the Board’s
`authority and the Director’s. See 939 F.3d at 1349–50. In particular, the
`Federal Circuit found that the Board abused its discretion by assuming “the
`authority that § 255 delegates to the Director and deciding the merits of
`Honeywell’s petition for a Certificate of Correction.” Id. at 1350. We do not
`read Honeywell as prohibiting the Board from allowing Patent Owner to
`request a correction and then declining to give it retroactive effect in the
`middle of a trial—as is the case here.
`Rather, retroactive application of the correction, at this stage and
`under the circumstances, would displace the role of the Petition. The Petition
`“is supposed to guide the life of the litigation.” SAS Inst. Inc. v. Iancu, 138
`
`7
`
`
`
`PGR2020-00031
`Patent 10,445,966 B1
`S. Ct. 1348, 1358 (2018). Here, we instituted a trial based on a Petition that
`did not challenge claims 26 and 27 under § 103. Thus, we would need to
`redefine the instituted proceeding to allow Petitioner to challenge the
`corrected claims on a statutory basis not presented in the Petition. This
`would be inefficient and disruptive at such a late stage of this particular
`proceeding.
`To be sure, corrected claims 26 and 27 are similar to claims 4 and 5,
`which are already challenged as obvious in the Petition. Pet. 3. Even so,
`Petitioner proposes to “add” claims 26 and 27 to the ground based on Nadaf
`and Heilper, whereas the Petition challenges claims 4 and 5 with Brockhouse
`and Heilper. Id. Although Heilper is common to both grounds, the Petition
`discusses only Brockhouse in the analysis of claims 4 and 5. Id. at 58–60.
`Specifically, the Petition asserts that Brockhouse teaches the data set that
`“includes the candidate’s name, the data set combined with” the recited
`“additional information” to assist in the recited identifying as in claim 4. Id.
`Although corrected claim 26 recites the same data set as claim 4, Petitioner’s
`newly proposed challenge to claims 26 and 27 lacks Brockhouse. Thus,
`Petitioner would need to explain for the first time how the Nadaf-Heilper
`combination teaches or suggests the data set that “includes the candidate’s
`name, the data set combined with” the recited “additional information” to
`assist in the recited identifying as claimed. Ex. 3003. In this way, granting
`Petitioner’s request would add an entirely new challenge to the trial.
`Also, claims 26 and 27 are challenged in the Petition as indefinite
`under § 112 and as encompassing ineligible subject matter under § 101. So,
`even without adding the requested new obviousness challenges, giving effect
`to the correction would inject new issues into the proceeding because the
`
`8
`
`
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`PGR2020-00031
`Patent 10,445,966 B1
`reasoning presented in the Petition may no longer apply to the corrected
`claims. These new issues would likely affect the trial’s scope.
`With or without Petitioner’s new challenges, shifting the scope of this
`proceeding to consider the corrected claims could impede the Board’s ability
`to meet its statutory deadlines. By declining to give effect to the correction,
`we keep the proceeding properly moored to the Petition that was the basis
`for instituting this trial.
`If Patent Owner wanted to have the corrected claims considered in
`this proceeding, it could have filed a Motion to Amend the claims under
`35 U.S.C. § 326(d). Patent Owner knew it had the opportunity to do so
`before the deadline passed but deliberately chose not to file the Motion to
`Amend: Patent Owner filed its Motion to Cede Jurisdiction for Correction of
`Claim on October 27, 2020, a month before the November 25 deadline to
`file its Motion to Amend. Paper 7, 10 (Scheduling Order). Patent Owner
`argued that a Motion to Amend under section 326 would “complicate these
`proceedings with the extra briefing and potential new grounds.” Paper 10,
`10. Now, Patent Owner requests that we give effect to the correction without
`allowing Petitioner an opportunity to respond to the newly corrected claims,
`as would have been available through the Board’s amendment process. We
`decline to adopt that proposal because it essentially circumvents the
`amendment process that Congress designed for this proceeding.
`In the conference call with the Board and in its opposition to the
`Motion, Petitioner argued that the Board should accommodate the prejudice
`that Petitioner will suffer if the Certificate of Correction issues by giving the
`correction effect in this proceeding. See Paper 11, 7–9 (Opposition);
`Ex. 3003. Petitioner, though, could still file a future petition for inter partes
`review with the challenge that it seeks to add to this proceeding. Although
`
`9
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`PGR2020-00031
`Patent 10,445,966 B1
`this proceeding has not yet terminated, we see no reason on this record that
`37 C.F.R. § 42.102(a), for example, would prohibit Petitioner from later
`filing a petition for inter partes review. See Paper 11, 8 n.1 (arguing that
`Petitioner “does not concede that such a petition would be time barred, but
`the applicability of 37 C.F.R. § 42.102(a) under this circumstance is not
`clear”). Nor has Petitioner shown, on this record, that it would be otherwise
`estopped from challenging the newly corrected claims of the patent with
`such a petition, even after a final written decision issues in this proceeding
`relating to the original claims. Filing another petition with the new
`obviousness challenge is far less disruptive and burdensome than effectively
`instituting a new proceeding in the middle of this one.
`Because we decline to retroactively apply the Certificate of Correction
`in this proceeding, we deny Petitioner’s request to “add claims 26 and 27 to
`Ground 4 of the Petition and to address the ‘corrected’ language of those
`claims for the first time in the Reply.” Ex. 3003.
`III. THE WORD LIMIT FOR PETITIONER’S REPLY
`In connection with the request to address the Certificate of Correction,
`Petitioner also requests increasing the word limit for its Reply by no more
`than an additional 1,000 words, which could only be used to address the
`corrected claims. Ex. 3003. For the reasons discussed above, we deny this
`request. See supra § II.
`Separate from Petitioner’s request to address the Certificate of
`Correction, the parties requested to increase the word limit for Petitioner’s
`Reply. Id. In the conference call on January 14, 2020 between the Board and
`the parties, counsel explained that the parties agreed to increase the word
`limit for Petitioner’s Reply by 750 words. Petitioner argues that Patent
`Owner’s Response exceeded the word limit by including text in graphics and
`
`10
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`PGR2020-00031
`Patent 10,445,966 B1
`using an unconventional citation format. For example, Petitioner argued that
`Patent Owner omitted spaces within its citations to reduce the number of
`words. Patent Owner disputes that this violates the rules but agrees to
`increase the word limit.
`“Excessive words in figures, drawings, or images, deleting spacing
`between words, or using excessive acronyms or abbreviations for word
`phrases, in order to circumvent the rules on word count, may lead to a
`party’s brief not being considered” to avoid “undue prejudice” to a party.
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 40
`(Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated.
`Here, Petitioner alleges that Patent Owner used an unconventional format for
`the citations in the Response to decrease the word count calculated by the
`word-processing program. But the citation format does not render the Patent
`Owner’s Response unreadable. To the extent that Patent Owner gained any
`advantage here, the parties have reached an agreement to avoid any undue
`prejudice that this may have caused to Petitioner. In this circumstance, we
`grant the requested increase of the word-limit for Petitioner’s Reply by 750
`words.
`
`IV. ORDER
`
`It is
`ORDERED that we deny Petitioner’s request to “add claims 26 and 27
`to Ground 4 of the Petition” and increase the word limit of Petitioner’s
`Reply by 1,000 word in connection with this request; and
`FURTHER ORDERED that we grant the request to increase the word
`limit for Petitioner’s Reply by 750 words.
`
`11
`
`
`
`PGR2020-00031
`Patent 10,445,966 B1
`FOR PETITIONER:
`
`Robert M. Evans, Jr.
`Michael J. Hartley
`STINSON LLP
`robert.evans@stinson.com
`michael.hartley@stinson.com
`
`FOR PATENT OWNER:
`Brian W. Oaks
`Nicholas A. Schuneman
`Kevin J. Meek
`Mark A. Speegle
`BAKER BOTTS LLP
`Brian.oaks@bakerbotts.com
`Nick.schuneman@bakerbotts.com
`Kevin.meek@bakerbotts.com
`Mark.speegle@bakerbotts.com
`
`
`12
`
`
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