By Kenny Luchesi

On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively.

After the IPR petition was filed, the patentee filed a petition for a certificate of correction for the challenged patent.  Specifically, the patentee sought the correction of the claimed priority date in order to remove an earlier patent as prior art—a patent the Board relied on to invalidate all of the challenged claims.  Due to various errors in the patentee’s petitions for correction, the certificate of correction did not issue until five months after the Board’s final written decision, and three months after the patentee filed its notice of appeal.  During the appeal, the patentee filed a motion with the Federal Circuit asking it to remand the case to the Board to consider the effect of the certificate of correction.  The Federal Circuit granted the motion, stayed the appeal with respect to the substance of the Board’s final written decision, and remanded for the Board to address one specific issue: what impact, if any, the later-issued certificate of correction has on the Board’s prior final written decision.

35 U.S.C. § 255 governs certificates of correction for an applicant’s mistake, and states that, if a certificate is issued, “[s]uch 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.”  Given the “thereafter arising” language of the statute, both the petitioner and patentee conceded that under the plain language of § 255, a certificate of correction could only apply prospectively, not retroactively, in a “trial of actions.”  The Board agreed.

The parties’ dispute, therefore, focused instead on whether an inter partes review proceeding constitutes a “trial of actions” under the statute.  If it does (as the petitioner argued), then both parties agreed that the certificate could not apply retroactively.  Indeed, given that the patentee did not seek the certificate until after the petition was filed, and the certificate did not issue until after the final written decision, the Board concluded that, if it were to assume that an IPR proceeding is a “trial of actions,” then “under the express language of the statute, the certificate would not impact this trial.”  However, if an IPR proceeding does not constitute a “trial of actions” (as the patentee argued), then the statute would arguably be silent as to the retroactivity of a certificate of correction in such a proceeding.  And the patentee argued that such silence must mean that a certificate of correction has retroactive application for anything not qualifying as a “trial of actions.”

The Board rejected this interpretation of the statute and found that, regardless of whether an IPR proceeding is a “trial of actions” or not, a certificate of correction cannot be applied retroactively.  The Board explained that “[t]he statute does not contain any affirmative language indicating any intention to retroactively apply a certificate of correction,” and that “[i]nferring retroactivity would be inconsistent with the plain language that Congress did include, which communicates that Congress contemplated only prospective application of a certificate of correction.”  The Board also found this interpretation consistent with (1) 35 U.S.C. §§ 254 and 256—the sister provisions to § 255; (2) 35 U.S.C. § 315(d); (3) Federal Circuit precedent; and (4) public policy.

The Federal Circuit expressly retained jurisdiction over the appeal on this issue, and it will be consolidated with the still-pending appeal of the substance of the Board’s final written decision; so it remains to be seen whether the Board’s decision regarding retroactive application of certificates of correction will be affirmed.

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Kenny Luchesi is a trial lawyer with more than 14 years of experience both as a product development engineer and as an attorney litigating complex intellectual property matters.