In a final written decision, the Board denied a patent owner’s request for a certificate of correction filed shortly after IPR institution in Douglas Dynamics, L.L.C. v. Meyer Products, LLC, IPR2015-01839, Paper 51 (P.T.A.B. Mar. 1, 2017).

Patent Owner Meyer filed a patent infringement suit against Douglas Dynamics, and Douglas Dynamics petitioned for IPR against the asserted patent. After institution of the trial, Meyer filed a motion requesting to correct an unchallenged claim 35 to change its dependency from a narrower claim 8 to a broader claim 1.

The PTAB denied Meyer’s motion because Meyer filed the motion after institution and because the correction would be a substantive broadening change. The PTAB found that allowing the broadening of claim 35 by changing its dependency would unfairly prejudice the petitioner, who elected not to challenge that claim because of its narrower scope. The PTAB also weighed Meyer’s general tardiness against the patent owner, as Meyer waited more than 15 years after issuance before requesting correction.

Although the PTAB denied the motion, it noted that its decision in no way impedes Meyer from filing a certificate of correction request subsequent to the conclusion of the IPR proceeding. See 37 C.F.R. § 1.323.

This case highlights the importance for patent owners to make any necessary claim corrections promptly after patent issuance, and certainly before filing a lawsuit that will likely trigger an IPR proceeding challenging the patent. However, the decision’s language appears to leave open the possibility of correction during an instituted IPR trial when the errors being corrected are not substantive. Consequently, any certificate of correction motions that are filed during an IPR trial should address how the proposed corrections do or do not substantively affect claim scope.