Guidance on Patent Owner’s Options if Petitioner’s Reply Presents New Evidence IPR2013-00308


Takeaway: A patent owner can respond to declarations issued in a petitioner’s reply by filing observations of cross-examination and/or bringing to the Board’s attention whether the reply or declaration go beyond the scope of a reply during a requested conference call or at the oral hearing.

In its Order, the Board explained the scope of Petitioner’s Reply and options for Patent Owner to respond to any declarations that may be filed with Petitioner’s Reply. Patent Owner believed that the declaration being offered by Petitioner was belatedly presenting new evidence that was in fact necessary for Petitioner’s case. Also, it was argued that Patent Owner would not have the opportunity to respond to new evidence in the declaration. Petitioner argued that the declarations merely responded to the claim construction argued by Patent Owner in its Response, and did not raise new issues. Continue reading

Order Providing Guidance on Motions to Exclude and Strike IPR2013-00288

Takeaway: The Board does not want to see any motions arguing that a party’s reply contains new arguments or evidence.

In its Order, the Board advised the parties that neither a motion to strike nor a motion to exclude is the proper mechanism to argue that the other party’s reply contains new arguments or evidence. The Board also authorized Patent Owner to file a motion for observation and Petitioner to file a response to Patent Owner’s observation. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00071

Takeaway: Failure to support unpatentability grounds with expert testimony filed with the petition cannot be corrected through later-filed expert declarations.

In its Final Written Decision, the Board found that Petitioners had not shown by a preponderance of the evidence that challenged claims 6 and 9 of the ‘930 patent are unpatentable. Continue reading

Order on Motions to Exclude and for Observations on Cross Examination IPR2013-00322

Takeaway: There is no specific provision for a “motion to strike” in the rules; instead, requesting the Board to authorize the filing of a motion to expunge is the appropriate mechanism for seeking the removal of an improperly filed paper.

In its Order, the Board summarized previous occurrences that had taken place, and then addressed motions to exclude and motions for observation that were at issue.  The Board had previously authorized Patent Owner to cross examine Petitioner’s expert who had testified in support of Petitioner’s Opposition to Patent Owner’s Motion to Amend and to cross examine that expert on his testimony in support of Petitioner’s Reply to the Patent Owner Response.  Moreover, the Board had previously ordered that any Patent Owner observations on cross examination concerning Petitioner’s expert’s testimony on the subject matter of Petitioner’s Reply to the Patent Owner Response must be filed no later than the same day that Petitioner’s observations, and any motions to exclude evidence, were due.  Petitioner then sought clarification on “the timing for objecting to and moving to exclude testimony that may be cited in Patent Owner’s observations on cross examination.” Continue reading

Denying Motion for Leave to File a Motion for Observation IPR2013-00358

Takeaway: A party will not likely be able to file a motion for observation on the cross-examination testimony of that party’s own declarants. However, a party may be able to persuade the Board to allow the party to cite to specific portions of its own witnesses’ cross-examination transcript to demonstrate that the opposing party has mischaracterized that testimony.

In its Order, the Board denied Patent Owner’s request to file a motion for observation on the cross-examination testimony of Patent Owner’s declarants. Patent Owner argued that Petitioner, in its reply, mischaracterized the testimony of Patent Owner’s witnesses. For example, the Patent Owner argued that Petitioner summarized the testimony incorrectly and cited portions of the deposition transcripts while failing to cite other contradictory portions. Because Patent Owner does not have the ability to respond to Petitioner’s Reply, Patent Owner wanted to file observations of its own witnesses to highlight certain portions of the transcripts. Continue reading

Authorizing Motions for Observations on Cross Exam IPR2013-00322

Takeaway: Parties may be limited by the topics that they could raise in a motion for observation depending upon the particular discovery period in which the deposition occurs and in which the motion is filed.

In its Order, the Board authorized Patent Owner to file a Motion for Observations on Cross Examination of Petitioner’s Expert, but only with respect to specific topics. In particular, Patent Owner was not authorized to file a motion for observations on topics concerning the proposed substitute claims, which could be addressed in Patent Owner’s Reply.  The Board authorized a motion for observations limited to testimony concerning subject matter in Petitioner’s Reply to the Patent Owner Response. Continue reading

Granting Motion for Observation and Denying Motion to Move Oral Hearing IPR2013-00218; IPR2013-00219

Takeaway: A motion for observation is a mechanism to draw the Board’s attention to relevant cross-examination testimony that must be filed following a specific form. Hearings will not be rescheduled to accommodate one of the lead counsel or back-up counsel where the other is available.

In its Order, the Board granted Patent Owner’s request to file a Motion for Observation of Petitioner’s Reply Witness. The Board denied Patent Owner’s request to move the oral hearing a few days to accommodate Patent Owner’s back-up counsel. Continue reading