Correcting the Petition

Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00809, paper 28 (November 26, 2014), the  Board allowed the Petitioner to file a corrected Petition and Exhibit under 37 C.F.R. § 42.104(c), and based upon the corrected Petition and exhibit, added a claim to the inter partes review.  The Board instituted inter partes review for less than all of the challenged claims, and the petitioner sought hearing after discovering a clerical error in the petition and the exhibit.  However the Board pointed out that rehearing was not the appropriate remedy, rather petitioner should have sought to correct the petition (rehearing of the uncorrected erroneous petition would reach the same result).

Petitioner filed a motion to amend the petition and exhibit, and despite patent owners objections, the Board agreed that it was a clerical error that caused the petition and expert declaration to cite to the wrong portions of the prior art.  The Board allowed the amendment, and altered its institution decision to include an additional claim.


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.