Extension of Time to Submit Supplemental Evidence Denied CBM2015-00179

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Takeaway: If prior art status of a reference is contested in prior proceedings, a petitioner should address any such deficiencies in the first instance, and not rely on being granted permission to file supplemental evidence.

In its Decision, the Board denied Petitioner’s request for an extension of time to file supplemental evidence and request to file a motion to submit supplemental information, and granted Patent Owner’s request to file a motion to stay related reexamination. Continue reading

Denying Motion to Submit Declaration as Supplemental Information Where Declaration Constituted Supplemental Evidence IPR2015-01078

Takeaway: Supplemental information may only be filed if a motion to submit supplemental information is granted. By contrast, supplemental evidence is served in response to an objection to the admissibility of evidence, and may also be filed with an opposition to a motion to exclude the objected to evidence.

In its Decision, the Board denied Patent Owner’s Motion to Submit Supplemental Information and ordered that the supplemental declaration be expunged from the record. Patent Owner sought to submit as supplemental evidence a supplemental declaration from Richard Mander, Ph.D., which the Board had previously authorized Patent Owner to file. Continue reading

Petitioner Correctly Designated As Supplemental Information Exhibits Offered To Support Contention That References Are Prior Art IPR2015-01379

Takeaway: The moving party seeking to submit supplemental information bears the burden of proof to establish that proposed exhibits are supplemental information, rather than supplemental evidence.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information. Petitioner filed a Motion to Submit Supplemental Information regarding three exhibits. Patent Owner asserted that Petitioner, as the moving party seeking to submit supplemental information, bears the burden of proof to establish that proposed Exhibits 1016-1018 are supplemental information, rather than supplemental evidence. Continue reading

Request to File Supplemental Declarations Denied IPR2015-00636; IPR2015-00637

Takeaway: The Board will not allow a party to file supplemental evidence outside of the procedure outlined in 37 C.F.R. § 42.64.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to submit supplemental declarations. Patent Owner requested authorization to file a motion to submit two supplemental declarations, a Kretschman declaration and a Ludwick declaration.

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Authorization Denied to File Motion to Submit Supplemental Information IPR2015-01176; -01211

Takeaway: Supplemental evidence refers to evidence that is submitted in response to an evidentiary objection and offered solely to support the admissibility of the originally-filed evidence. Supplemental information is evidence submitted outside of the authorized papers that a party intends to rely on to support its argument on the merits. Continue reading

Authorized To Cross-Examine After Declaration Was Filed Regardless Of Service Date IPR2015-00014

Takeaway: A party is not required to cross-examine a declarant at the time when the opposing party is first served with the declaration; rather, cross-examination can take place after supplemental evidence relating to the direct testimony has been filed.

In its Order, the Board mooted Patent Owner’s Request for Authorization to depose Petitioner’s declarant and ordered Petitioner to expunge the declarant’s testimony from the proceedings.      Continue reading

Final Written Decision Confirming All Challenged Claims IPR2014-00788

Takeaway: Evidence presented by a petitioner after the petition showing public availability of a reference need not be submitted as supplemental information, but can be submitted with its reply as long as it directly addresses contentions made in the patent owner response.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that the challenged claims (10-20) of the ’155 Patent are unpatentable.  The ’155 Patent relates to “a system and method of providing publishing and printing services via a communication network.” Continue reading

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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