Demonstrative Exhibits Permitted and Excluded IPR2015-00780; IPR2015-00783

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Takeaway: A party is generally not permitted from using a demonstrative slide that discusses a specific portion of an exhibit that was not previously cited in its pleadings. 

In its Order, the Board prohibited and permitted use of certain demonstrative slides by Patent Owner at the oral hearing. The Board noted that while demonstrative slides are visual aids to a party’s oral presentation, they cannot add new evidence to the record of the proceeding and are not an opportunity for additional briefing. Continue reading

Final Written Decision Holding that CIP Not Presumed to be Entitled to Earlier Filing Date IPR2014-00824

Takeaway: A continuation-in-part application is not presumed to be entitled to the filing date of an earlier filed application, and the burden of production falls on the party asserting that an application is entitled to an earlier filing date. Continue reading

Denying Leave to File an Additional Motion to Exclude IPR2014-00042

Takeaway: A motion to exclude is for seeking the exclusion of evidence, not the exclusion of attorney argument.  Also, argument made by counsel at oral hearing does not become evidence simply because it may appear in a transcript of the oral hearing.

In its Order, the Board refused Patent Owner’s request for authorization to file an additional motion to exclude.  Also, the Board ordered that Paper 46 be expunged from the record. Continue reading

Order Regarding Demonstrative Exhibits IPR2013-00493

Takeaway: It is improper to present material in a party’s demonstrative exhibits that was not previously made of record in the proceeding.

In its Order, the Board sustained-in-part and overruled-in-part certain objections that Petitioner had made with respect to the propriety of certain of Patent Owner’s demonstrative exhibits. In particular, the Board sustained Petitioner’s objection to Patent Owner’s Exhibits 2006 and 2007; sustained Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 7-12 and 15 and overruled Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 19 and 20; ordered that Patent Owner’s Exhibits 2005, 2006, and 2007 be expunged; barred Patent Owner from using during the oral hearing any material from pages 7-11 and 15 of Exhibit 2005 or any material from either Exhibit 2006 or Exhibit 2007; and authorized Patent Owner to replace Exhibit 2005 with a new demonstrative exhibit. Continue reading

Granting Sua Sponte Motion to Exclude Demonstrative Exhibit IPR2013-00357

Takeaway: Any exhibits or arguments that are presented at the final oral hearing, including demonstrative exhibits, must have been presented in a prior paper.

In its Order, the Board excluded certain slides of Patent Owner’s demonstrative exhibits. Petitioner objected to those slides because they contained (1) a new picture of Figure 2 that was not presented identically in the trial history; and (2) lines which had been altered in that figure.  Patent Owner argued that the portions of the objected to slides are intended to be a tutorial on the patent at issue and are based on descriptions in its brief, but acknowledged that the graphics do not appear in the brief or other papers. Continue reading

Expunging Demonstrative Exhibits IPR2013-00203

Takeaway: Demonstratives used at an oral hearing should not be duplicative of documents already in the record, and should not present new evidence or argument. Instead, they should be a visual aid to the party’s presentation.  

In its Order, the Board expunged Patent Owner’s demonstrative exhibits.  Petitioner filed objections to certain Patent Owner demonstratives.  Patent Owner stated that most of the demonstratives were duplicates of documents already in the record because it was unsure which materials it would be permitted to reference during oral argument, and that it may not rely on every page of the demonstratives. Continue reading

Order Granting Request to File Demonstrative Exhibits IPR2013-00132

Takeaway: Demonstrative exhibits are merely visual aids and not evidence. They need not appear in a party’s briefing to be allowable.

In its Order, the Board authorized Patent Owner to use certain demonstrative exhibits that were objected to by Petitioner. Petitioner had argued that the exhibits were improper because they did not appear in Patent Owner’s Response.  Patent Owner agreed that the exhibits did not appear in its briefing, but argued that the exhibits demonstrated arguments made in the Patent Owner Response. Continue reading