Denying “Delayed” Motion to Seal IPR2016-00149, 150

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Takeaway: A party’s delay in bringing a motion to seal a publicly filed exhibit will likely cut against that party’s assertions of alleged prejudice associated with keeping the exhibit available to the public.

In its Decision, the Board denied Patent Owner’s opposed Motions to Seal Exhibits 1003 and 2003 in each of the ’149 and ’150 IPRs. The facts concerning the Exhibits subject to the Motions were not in dispute.  Patent Owner argued that the Exhibits should be sealed as they were the subject of negotiations under FRE 408 and contained confidential business information. Continue reading

Decision Denying Petitioner’s Motions to Expunge IPR2014-00935, -00936, -00938

Takeaway: The Board may not consider a motion to expunge allegedly confidential information subject to a protective order until after the resolution of any appeal or until after the time for appeal.

In its Decision, the Board denied Petitioner’s Motions to Expunge certain materials and ordered that the record be “preserved until after the resolution of any appeal or time for appeal.” After Final Written Decisions were issued in the related proceedings, Petitioner sought to expunge materials it deemed to be confidential. Continue reading

Granting Request to Expunge Motion for Observation IPR2015-00325

Takeaway: If a patent owner is granted authorization to file a surreply on a particular issue after cross-examination of a reply witness, the patent owner cannot also file observations on the cross-examination of the reply witness directed to the same issue.

In its Order, the Board granted Petitioner’s request for Patent Owner’s Motion for Observation to be expunged. The Board noted that “the purpose of a motion for observation is to provide a party a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply by the party.” In this case, the Board granted Patent Owner’s “request for authorization to file a surreply with respect to the issue of antedating the asserted prior art reference patents involved in the grounds of unpatentability on which trial has been instituted.” The surreply could be filed with sufficient time after cross-examining Petitioner’s Reply witness. Accordingly, the surreply, which was Patent Owner’s last substantive paper, was filed after the cross-examination. Accordingly, it was improper to file observations on the cross-examination directed to the issue discussed in the surreply, when the surreply was filed after the cross-examination. The Board noted that Patent Owner could have filed observations on the cross-examination directed to issues other than what was authorized to be discussed in the surreply, but that was not the case in this proceeding. Continue reading

Parties’ Unauthorized Mandatory Notices Submissions Expunged IPR2015-00040

Takeaway: The filing of an appropriate notice concerning a related proceeding requires prior Board authorization and is not a briefing opportunity to advocate a desired conclusion in the matters pending before the Board.

In its Order, the Board expunged the parties’ Supplemental Mandatory Notices as constituting unauthorized papers. The Board further scheduled a joint conference call “to discuss the matter of mandatory notices as they pertain to a related proceeding.” Continue reading

Order Regarding Withdrawal and Substitution of Counsel IPR2015-00921

Takeaway: Counsel may not withdraw from a proceeding unless the Board authorizes such withdrawal, and a motion seeking withdrawal may only be filed after obtaining the Board’s authorization to file such a motion.

In its Order, the Board ordered Patent Owner’s Substitute Power of Attorney be expunged from the record and authorized Patent Owner to file a Motion for Withdrawal and Substitution of Counsel. Continue reading

Denying Request to File Motion to Expunge Where Issue Could be Addressed in Sur-Reply IPR2015-00035

Takeaway: A motion to expunge a new patentability challenge raised for the first time in the petitioner’s reply is unnecessary where the patent owner can indicate its position in its sur-reply and the Board can review the pertinent materials without the aid of a motion to expunge.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to expunge. The Board further denied Patent Owner’s request for additional pages for its sur-reply. Continue reading

Declaration Expunged Where Declarant Refused Cross-Examination IPR2014-01198

Takeaway: If a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.

In its Order, the Board granted-in-part, Petitioner’s Motion to Strike the Declaration of Patent Owner’s witness. Patent Owner submitted the Declaration of Francois Lepron with the Patent Owner Response. Mr. Lepron refused to be deposed for personal reasons. The Board authorized Petitioner to file a Motion to Strike the Lepron Declaration and for Patent Owner to file an Opposition to Petitioner’s Motion to Strike. Continue reading

Decision Granting Motion To Expunge Patent Owner’s Motion for Observation Which Commented On Patent Owner’s Own Expert IPR2014-01178, -01297, 01449

Takeaway: The Board’s rules for inter partes review do not specifically provide a mechanism for a party to provide observations on cross-examination of its own witnesses.

In its Decision, the Board granted Petitioner’s Motion to Expunge Patent Owner’s Motion for Observation. Petitioner’s Response to Patent Owner’s Motion for Observation was also expunged.

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Order to Expunge – Conduct of the Proceeding IPR2015-00372, -374, -378

Takeaway: Objections to evidence should be served and filed, but supplemental evidence should only be served, and not filed, before a motion to exclude.

In its Decision, the Board authorized Petitioner to file previously served evidentiary objections and ordered expungement of supplemental evidence filed by Patent Owner.

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