Patent Owner Granted Leave in IPR to Seek Correction of Claims Held Indefinite in Parallel District Court Litigation

Jan 29, 2021

Reading Time : 2 min

The petitioner in this case sought IPR of some, but not all, claims of the patent under review. After considering the patent owner’s preliminary response, the board instituted trial. Soon after institution, the patent owner filed its motion seeking leave to petition the Director for a certificate of correction related to certain claims not under review in the IPR. According to the patent owner, those claims included a mistake correctable under § 255. The petitioner filed an opposition and the patent owner subsequently filed a reply.

In analyzing the patent owner’s motion, the board explained that the Federal Circuit in Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349–50 (Fed. Cir. 2019) describes the three steps a patent owner must take when seeking a certificate of correction of a patent undergoing an IPR—namely: (1) seek authorization from the board to file a motion for leave; (2) if the board grants authorization, the patent owner must ask the board to cede its exclusive jurisdiction so that the patent owner can request a certificate of correction from the Director; and (3) if the board cedes its jurisdiction, the patent owner can then petition the Director for a certificate of correction.

In resolving the patent owner’s motion, the board explained that it did not have the authority to decide whether the patent owner met the requirements of § 255. Instead, according to the board, it could determine only whether the patent owner had provided enough basis to support its position that the mistake may be correctable by the Patent Office.

The board explained that § 255 states that the director may correct “a mistake of a clerical or typographical nature, or of minor character,” which “appears in a patent and a showing has been made that such mistake occurred in good faith.” The patent owner contended that the claims for which it sought correction contained such a mistake because they contained words such as “absorption bands,” which made no sense in the context of the patent, instead of the correct terminology, “diffraction peaks.” Although the patent owner acknowledged that the claims for which it sought correction were held indefinite—by a district court in a related litigation—they were correctable through a certificate of correction. The patent owner argued that Federal Circuit precedent made clear that the Patent Office has broader authority than a district court to correct errors in a patent. In granting the motion for leave, the board ordered the patent owner to submit, along with its request for a certificate of correction to the Patent Office, the full briefing before the board as well as the board’s decision.

Practice Tip: Patent owners facing a district court holding of indefiniteness should recognize that, under certain circumstances, they may seek a certificate of correction from the Patent Office, even if the patent is under review before the board. Critically, a patent owner facing such a situation must follow the proper procedural channels before the board to maximize its chances of success.

Mylan Pharms. Inc. et al. v. Merch Sharp & Dohme Corp., IPR2020-00040, Paper 76 (PTAB Dec. 23, 2020)

 

Share This Insight

Previous Entries

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.