Trials@uspto.gov
`571-272-7822
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`Paper 9
`Entered: September 22, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SWEEGEN, INC.,
`Petitioner,
`
`v.
`
`PURECIRCLE SDN BHD AND PURECIRCLE USA INC.,
`Patent Owners.
`____________
`
`PGR2020-00070
`Patent 10,485,257 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, JENNIFER MEYER CHAGNON, and
`JAMIE T. WISZ, Administrative Patent Judges.
`
`WISZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion to Correct Clerical Mistakes
`37 C.F.R. § 42.104(c)
`
`
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`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Entered: September 22, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SWEEGEN, INC.,
`Petitioner,
`
`v.
`
`PURECIRCLE SDN BHD AND PURECIRCLE USA INC.,
`Patent Owners.
`____________
`
`PGR2020-00070
`Patent 10,485,257 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, JENNIFER MEYER CHAGNON, and
`JAMIE T. WISZ, Administrative Patent Judges.
`
`WISZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion to Correct Clerical Mistakes
`37 C.F.R. § 42.104(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2020-00070
`Patent 10,485,257 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner filed a Motion to Correct Clerical Mistakes under 37 C.F.R.
`§ 42.104(c) on September 8, 2020. Paper 7 (“Mot.”). In the Motion,
`Petitioner requests permission to file Supplemental Declarations of Enrique
`Arevalo and Kim Friis Olsson “to correct clerical errors within the lab report
`submitted as part of the Declaration of Enrique Arevalo (Ex. 1010) and
`incorporated into the Declaration of Kim Friis Olsson (Ex. 1007).” Id. at 1.
`Patent Owner filed a response on September 14, 2020. Paper 8 (“Opp.”).
`Patent Owner opposes the motion arguing, inter alia, that “the proposed
`changes will have a substantial impact on these proceedings.” Id. at 1. For
`the following reasons, we deny the Motion.
`
`II.
`
`THE PARTIES’ CONTENTIONS
`
`1. Petitioner’s Contentions
`According to Petitioner, in support of the Petition, they
`“commissioned Conagen and Spectrus to replicate Example 14 of PCT
`Publication No. WO 2011/153378 (‘Kishore’) for the purpose of
`demonstrating that the disclosed procedure would have necessarily produced
`Reb X (also known as ‘Reb M’).” Mot. 1 (citing Ex. 1007 ¶ 238).
`Spectrus’s testing results were documented in a report (the “Spectrus
`Report”), which was created by Enrique Arevalo of Spectrus using a
`software package called RStudio. Id. at 2. The Spectrus Report was
`attached as an exhibit to Enrique Arevalo’s Declaration (Ex. 1010) and the
`resulting concentrations of Reb A, Reb D, and Reb M were reported in both
`graph and table form. Id. (citing Ex. 1010, 10–14). The Petition and
`Spectrus Report were filed on June 22, 2020. Id. at 1.
`
`2
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`PGR2020-00070
`Patent 10,485,257 B2
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`According to Petitioner, on approximately July 14, 2020, one of
`Conagen’s employees “noticed that the data for the ‘experimental’ yeast
`strain in Tables 5–7 and Figures 7 and 9 of the Spectrus Report did not
`match” and Enrique Arevalo subsequently “determine[d] that the executable
`code creating Tables 5–7 inadvertently linked the tables to the incorrect data
`cells within RStudio.” Mot. 2 (citing Mot. Ex. A ¶¶ 8–9). Petitioner
`describes the error as follows:
`Specifically, the data presented in Table 6 of the original
`Spectrus Report actually corresponded
`to
`the Reb A
`concentration and should have been in Table 5; the data
`presented in Table 7 of the original Spectrus Report actually
`corresponded to the Reb D concentration and should have been
`in Table 6; and data presented in the last three columns of Table 5
`of the original Spectrus Report actually corresponded to the
`Reb M concentration and should have been in Table 7 (although
`shifted over one column). Compare Ex. 1010 and Proposed
`Exhibit 1043; see also Ex. B (redline).
`Id. at 2–3.
`
`Petitioner further contends that Enrique Arevalo corrected this error
`on July 16, 2020 but that Petitioner’s expert, Kim Friis Olsson, who had
`incorporated Table 7 into his declaration, was on vacation and unavailable to
`review the corrected Spectrus Report until early August. Mot. 3. According
`to Petitioner, Kim Friis Olsson reviewed the corrected Spectrus Report on
`August 5, 2020, and Petitioner presented the proposed supplemental
`declarations to Patent Owner on August 12, 2020. Id.
`
`Petitioner contends that they should be allowed to submit the
`Supplemental Declarations of Enrique Arevalo and Kim Friis Olsson
`because “the error was a clerical mistake limited to three isolated tables of
`the Spectrus Report.” Mot. 4. Petitioner also asserts that, although there
`was a “slight delay between learning of the error and bringing the error to
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`Patent 10,485,257 B2
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`the Board’s attention, this delay was the result of Kim Friis Olsson being on
`vacation and Petitioner seeking Patent Owner’s consent to submit the
`corrected report and supplemental declarations.” Id. Petitioner further
`contends that Patent Owner “will not be procedurally prejudiced by allowing
`Petitioner to submit the supplemental declarations” because Patent Owner
`still has “a nearly three-month window in which to prepare its preliminary
`response as of the date it was informed of the clerical error.” Id. Lastly,
`Petitioner asserts that the proposed corrections will not have any impact on
`the proceedings because Grounds 1–4 do not rely on the Spectrus Report and
`the tables being corrected represent a redundant presentation of the data. Id.
`at 5.
`
`2. Patent Owner’s Contentions
`Patent Owner contends that “the proposed changes will have a
`substantial impact on these proceedings” and “are far more substantive than
`changes that have been rejected by the Board in other cases.” Opp. 1.
`Patent Owner also contends that Petitioner unreasonably delayed informing
`them of these errors and that the proposed changes will cause prejudice. Id.
`
`III. ANALYSIS
`
`An inter partes review proceeding begins with the filing of a petition.
`37 C.F.R. § 42.104 (2018). The purpose is to give adequate notice to the
`patent owner of the basis for relief by laying out the petitioner’s grounds and
`supporting evidence. See Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated, at 42. Our rules
`provide that “[a] motion may be filed that seeks to correct a clerical or
`typographical mistake in the petition.” 37 C.F.R. § 42.104(c) (2018). This
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`Patent 10,485,257 B2
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`rule allows errors to be corrected in certain circumstances without
`sacrificing the notice function of the petition. When deciding whether to
`allow correction, the Board has considered various non-exclusive factors
`such as:
`(1) the nature of the error, and whether the party requesting relief
`provides adequate explanation for how the error occurred,
`including how the error was discovered;
`(2) the length of time elapsed between learning of the error and
`bringing the error to our attention;
`(3) prejudice to the other party, if any, by allowing the proposed
`corrections; and
`(4) whether the proposed corrections have any impact on the
`proceeding.
`Ivantis, Inc. v. Glaukos Corp., IPR2018-01180, Paper 14 at 9 (PTAB Dec. 6,
`2018) (Institution Decision). We consider each of these factors below.
`
`1. The nature of the error, and whether the party requesting relief
`provides adequate explanation for how the error occurred, including
`how the error was discovered.
`With regard to the first factor, we find that the nature of the error is
`substantial because Petitioner seeks to change the data in three tables.
`Although Petitioner characterizes the data as simply being presented in the
`wrong tables, corrected Table 7 appears to include a column of new data for
`“Sample 72_M” that is not included in any of the original tables. Compare
`Ex. 1010, 9–10, with Proposed Exhibit 1043, 9–10; see also Mot. Ex. B, 9–
`11.
`
`In addition, although Petitioner asserts that the original bar graphs
`included the correct data, it would not have been apparent from reviewing
`the original Spectrus Report which data—the bar graphs or tables—was
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`PGR2020-00070
`Patent 10,485,257 B2
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`actually correct.1 Furthermore, Petitioner’s expert, Kim Friis Olsson, relies
`on and reproduces the incorrect Table 7 in his original Declaration. See Ex.
`1007, 112.
`Therefore, we determine that, even if the errors in the original
`Spectrus Report resulted from a clerical error, the proposed changes to the
`Spectrus Report and the proposed supplemental declarations are not mere
`clerical errors that may be corrected under Rule 104(c). Rather, the
`proposed changes present substantive new evidence.
`Accordingly, we find that this factor weighs strongly in Patent
`Owner’s favor.
`
`2. The length of time elapsed between learning of the error and
`bringing the error to our attention.
`Petitioner learned of the error on July 14, 2020 and corrected it on
`July 16, 2020. Mot. 2. Petitioner’s expert was on vacation and unable to
`review the error until August 5, 2020. Id. at 2–3. Petitioner alerted Patent
`Owner to the error on August 12, 2020. Id. at 3. Petitioner contacted the
`Board on August 24, 2020.
`Although there does appear to have been some delay in bringing the
`error to the Board’s attention after learning of the error, we do not find this
`delay to be entirely unreasonable in this case, and therefore, we find that this
`factor is neutral.
`
`
`1 The bar graphs in Figures 8 and 9 of the original Spectrus Report were also
`mislabeled as “Reb A, Reb D, Red M” instead of “Reb D, Reb M,” which
`causes further confusion. See Mot. Ex. B, 7.
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`Patent 10,485,257 B2
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`3. Prejudice to the other party, if any, by allowing the proposed
`corrections.
`As discussed above, Petitioner’s proposed changes are substantive in
`nature; therefore, it would be prejudicial to Patent Owner to have to change
`their arguments at this point to account for the new data. A petition seeking
`inter partes review should be complete at the time it is filed in connection
`with the asserted grounds of unpatentability and the evidence and analysis
`offered in support thereof. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22,
`42.104(b). Although clerical or typographical errors can be corrected under
`37 C.F.R. § 42.104(c), this rule does not give a petitioner recourse to make
`substantial alterations to the petition or the evidence supporting the petition.
`Accordingly, we find this factor weighs strongly in Patent Owner’s
`favor.
`
`4. Whether the proposed corrections have any impact on the
`proceeding.
`According to Petitioner, the purpose of the testing presented in the
`Spectrus Report was to “demonstrat[e] that the disclosed procedure would
`have necessarily produced [Reb M],” in support of Petitioner’s assertion that
`the claims of the challenged patent are anticipated by Kishore. Mot. 1, 5.
`Petitioner’s proposed corrections would more than double the amount of
`Reb M that was shown to be produced in the experiment, thereby improving
`Petitioner’s anticipation argument. See Opp. 3; Mot. Ex. B, 11. Therefore,
`the proposed changes substantially affect Petitioner’s arguments and could
`have an impact on the proceedings.
`Accordingly, we find this factor weighs strongly in Patent Owner’s
`favor.
`
`7
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`PGR2020-00070
`Patent 10,485,257 B2
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`5. Conclusion
`Considering the factors discussed above, we find that they weigh in
`favor of denying Petitioner’s Motion to Correct Clerical Mistakes. For these
`reasons, Petitioner’s Motion is denied.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Correct Clerical Mistakes
`under 37 C.F.R. § 42.104(c) (Paper 7) is denied.
`
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`8
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`PGR2020-00070
`Patent 10,485,257 B2
`
`
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`FOR PETITIONER:
`
`Jason H. Conway
`Elizabeth E. Millard
`John R. Schroeder
`STINSON LLP
`jason.conway@stinson.com
`elizabeth.millard@stinson.com
`john.schroeder@stinson.com
`
`
`FOR PATENT OWNERS:
`
`Stuart E. Pollack
`Jeffrey R. Cole DLA
`PIPER LLP (US)
`stuart.pollack@us.dlapiper.com
`jeff.cole@us.dlapiper.com
`
`
`
`
`9
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