Takeaway: Even though the issue of whether arguments exceed the proper scope of a reply are normally decided by the Board when preparing a final written decision, the Board may still enter interlocutory orders disposing of the issue.
In its Order, the Board denied Patent Owner’s request for authorization to file a motion to strike and allowed Patent Owner to file the certificate of corrections issued for the challenged patents. Patent Owner sought to strike arguments in Petitioner’s reply that Patent Owner contended were outside the proper scope of a reply. Although the Board did not authorize the filing of a motion to strike, the Board nevertheless ordered that Petitioner’s arguments were indeed outside the proper scope of its reply. Continue reading
Takeaway: The Board may not consider arguments contained only in a declaration that are not presented specifically within the Patent Owner response itself.
In this Order, the Board denied Petitioner’s request for authorization to file a motion to strike the declaration of Patent Owner’s expert, Mr. Hussey. In this regard, Petitioner argued that portions of Mr. Hussey’s declaration were argumentative and that the references to the declaration in Patent Owner’s Response were designed “to circumvent the page limit for Patent Owner responses.” Patent Owner, in response, argued that Mr. Hussey’s declaration includes relevant statements of fact and that the argument presented in Patent Owner’s Response “is sufficient to support its assertions, which are based on facts established by Mr. Hussey’s declaration.” Continue reading
Takeaway: The Board will automatically consider whether a petitioner’s reply exceeds the proper scope when it prepares its final written decision, and patent owner should not file any papers arguing as such, but can raise the issue at the oral argument.
In its Order, the Board gave Patent Owner guidance on the proper way to challenge the scope of Petitioner’s Reply. The Board held a previous conference call on the issue and suggested that the parties attempt to resolve the dispute by considering whether any portions of the Response and/or Reply could be withdrawn. The parties were unable to reach agreement, and Patent Owner requested guidance from the Board as to how to challenge the scope of the Reply. Continue reading
Takeaway: Neither a motion to strike nor a motion to exclude should be filed to argue whether a petitioner’s reply or related evidence is beyond the scope of reply. The Board will make that determination when deciding the case without input from the patent owner.
In its Order, the Board denied Patent Owner’s request to file a motion to strike a declaration filed by Petitioner with its Reply. Patent Owner argued that Petitioner relied, for the first time, upon results of testing that should have been presented in connection with Petitioner’s Petition. The Board ruled that a ruling on such a motion is premature. Whether a reply contains arguments or evidence that is outside the scope of a proper reply is left to the determination of the Board. If there are improper arguments and evidence presented with a reply, the Board may exclude the reply and related evidence without any motion made by a patent owner. The Board also explained that a motion to exclude would not be a proper forum for raising similar arguments, because motions to exclude should only relate to admissibility of evidence (e.g., authenticity or hearsay). Continue reading
Takeaway: Although generally a Petitioner’s Reply may not present new arguments, Petitioner’s Reply may appropriately include arguments that are responsive to positions taken in the Patent Owner Response.
In its Order, the Board authorized Patent Owner to file a motion for observations on cross-examination of Petitioner’s reply declarant. Petitioner did not oppose this authorization. At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations.
Also, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply. In this connection, Patent Owner provided three assertions in support of Patent Owner’s position that Petitioner’s Reply presented new arguments and, therefore, exceeded the proper scope of a reply. Continue reading
Takeaway: A petitioner likely will not be permitted to introduce new arguments in its reply brief except in response to new arguments raised in a patent owner’s response.
In its Order, the Board denied Patent Owner’s Motion for Leave to File Motion to Strike, declining to rule on the permissible scope of Petitioner’s Reply brief until the final written decision. The Board also granted a one-week due date extension to the Patent Owner and authorized it to file a Motion for Observation on Cross-Examination of Petitioner’s Reply declarant. Continue reading
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
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
Takeaway: Motions that are filed in violation of the Board’s orders and that were previously argued as being improper by the movant will not be successful.
In its Order, the Board dismissed Patent Owner’s Motions to Exclude, noting that they would not be considered on the merits. The Board held that the Motions to Exclude were contradictory to the Board’s previous order and were also contradictory to arguments made by Patent Owner. Continue reading
Takeaway: The Board will not grant leave to file a motion to strike a reply absent special circumstances. In the ordinary course, the Board will determine whether a reply exceeds the proper scope when preparing the final written decision, without a motion to strike being filed.
In its Order, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply and accompanying declaration. Patent Owner argued that Petitioner’s Reply and accompanying declaration improperly asserted a new claim interpretation, new grounds of unpatentability, and new arguments based on different portions of the asserted prior art references than those relied on in the Petition. A reply may only respond to arguments raised in the corresponding patent owner response, and reply evidence must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion. Continue reading