Board Explains Differences and Limitations on Supplemental Evidence and Supplemental Information IPR2015-00690

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Takeaway: Supplemental evidence under 37 C.F.R. § 42.64(b)(2) is limited to supporting the admissibility of originally filed evidence; it cannot be used to conduct discovery or introduce documents for the purpose of supporting an argument on the merits.

In its Decision, the Board denied Petitioner’s Motion to Submit Supplemental Information and Petitioner’s Motion to Compel Testimony. 37 C.F.R. § 42.64(b)(2) states, in part, that a party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection. In the event that the objecting party is not satisfied that the supplemental evidence overcomes the objection, the objecting party may preserve its objection by filing a motion to exclude the objected to evidence. Continue reading

Must Request Authorization to File Motion to Submit Supplemental Information Within One Month of Institution IPR2015-00324

Takeaway: When a petitioner wishes to seek authorization to submit supplemental information, it must actually request authorization to file a motion to submit supplemental information—and not merely request a conference call with the Board—within one month of institution of trial. 

In its Decision, the Board denied Petitioner’s request for authorization to file a motion to submit supplemental information.

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Denying Authorization to Seek a Subpoena to Compel Testimony IPR2014-01372; IPR2014-01374

Takeaway: Authorization to seek a subpoena to compel testimony by an expert was denied where the request was made too close to the deadline for submitting any supplemental evidence arising from such compelled testimony.

In its Order, the Board denied Patent Owner’s request for authorization to seek a subpoena and its request for an extension of the deadline to submit supplemental evidence. Patent Owner requested a conference call to request authorization to seek a subpoena from a district court and for an extension of the deadline to submit supplemental evidence. Continue reading

Decision Denying Motion to Submit Supplemental Exhibits to Petition IPR-2014-01510, -01511, -01513

Takeaway: A motion to submit supplemental information should identify the instituted claims to which the proffered information relates and explain its relevance.

In its Decision, the Board denied Petitioner’s motion to submit supplemental information, stating that “[t]he filing of a petition for inter partes review should not be turned into a two-stage process, first to elicit a claim interpretation by the Board, and second to complete the petition on the basis of that claim interpretation.”

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Granting Motion to File Supplemental Evidence and Request to Cross-Examine IPR2014-01385

Takeaway: Cross-examination of third-party witnesses should be narrowly tailored to minimize the burden on the third party.

In its Decision, the Board granted Petitioner’s request to file supplemental evidence as supplemental information and granted Patent Owner’s request to cross-examine a third-party declarant. Continue reading

Final Written Decision IPR2014-00148

Takeaway: To qualify as a printed publication, a document must be generally available and “sufficiently accessible to the public interested in the art” before the critical date.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that the challenged claims, claims 1-8, 10-12, 14-20, and 22-24, of the ’178 Patent are unpatentable. The ’178 Patent relates to a massager with an inductively chargeable power source. Continue reading

Granting Extension of Time to Submit Supplemental Evidence CBM2014-00091-93

Takeaway: The Board may grant an extension of the deadline for serving supplemental evidence where service of such evidence is delayed for a short period of time due to difficulties obtaining a certified copy of the reference from a foreign patent office.

In its Order, the Board granted Petitioner’s request for an extension of the deadline for serving supplemental evidence.

According to Petitioner, it was unable to serve a certified copy of “the application file of the Teramura reference” to Patent Owner until after the deadline for supplemental evidence “due to difficulties with the Canadian Patent Office, including the unavailability of a three-day turnaround for certified copies and closings of government offices in Ottawa around October 22nd, 2014.” Continue reading

Granting Motion to Submit Supplemental Information IPR2014-01204

Takeaway: Exhibits that are filed with a motion to submit supplemental information to provide additional evidence regarding a prior art’s public availability may be treated as supplemental information even if the exhibits are responsive to a patent owner’s evidentiary objections.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information as evidence to confirm the public accessibility of a prior art reference. Petitioner sought to submit several exhibits, including declarations related to the public accessibility of the Broggi reference as well as an article citing to the Broggi reference. Continue reading

Granting Petitioner’s Motion for Authorization to Compel Third Party Testimony IPR2014-01385

IBM v. Intellectual Ventures I LLC

Takeaway: A Petitioner or Patent Owner can obtain authorization from the Board to apply for a subpoena from a United States District Court for testimony and documents of an entity that is not a party to the proceeding, if the Petitioner or Patent Owner (1) identifies, as specifically as possible, what testimony and documents it seeks from the third party, (2) explains why such information is relevant and needed at this stage in the proceeding, (3) describes all efforts made by Petitioner to obtain the information outside the use of a subpoena, and (4) demonstrates more than a possibility that it will obtain the evidence it seeks.

In its Order, the Board granted Petitioner authorization to apply for a subpoena from the Clerk of the United States District Court for the district where the testimony of Oracle Corporation, which is not a party of this proceeding, is to be taken limited to the document request and deposition request submitted in this proceeding as Exhibit 1015. The Board also granted Patent Owner permission to attend the deposition and cross-examine the witness, but only regarding the subject matter of the direct testimony of the witness. Continue reading

Authorizing Motion to Submit Supplemental Evidence IPR2015-00065

Takeaway: A patent owner response that is filed within ten days of institution and that argues the admissibility of evidence in the petition could be construed as objections to the evidence, in response to which the petitioner may serve supplemental evidence.

In its Order, the Board authorized Petitioner to serve supplemental evidence under 37 C.F.R. § 42.64(b)(2) and dismissed its request to file supplemental evidence under 37 C.F.R. § 123(a). Continue reading