Final Written Decision Confirming All Challenged Claims IPR2014-00788

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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

Conduct of the Proceeding CBM2014-00184, -00185

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Takeaway: When Petitioner objects to Patent Owner’s Response and an accompanying Declaration, Patent Owner cannot file corrected versions unless a motion to submit supplemental information is first authorized and granted.

In its Decision, the Board denied Patent Owner’s and Petitioner’s requests to expunge a declaration submitted with Patent Owner’s Response and also denied Patent Owner’s request to submit substitute a Corrected Patent Owner’s Response and Amended Declaration.

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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

Denying Motion to Submit Supplemental Information Attempting to Change the Type of Evidence Relied On in the Petition IPR2014-01548

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Takeaway: The Board may deny a petitioner’s motion to submit supplemental information if the supplemental information would change the evidence on which the petitioner relied upon in making its original challenge to the patent.

In its Decision, the Board denied Petitioner’s Motion to Submit Supplemental Information. The Board had previously instituted inter partes review of claims 3 and 5 of the ‘008 patent based on alleged anticipation by Hirano. Continue reading

Expunging Declaration Held to be Improperly Submitted as Exhibit to Motion to Exclude IPR2014-00552

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Takeaway: A party may not circumvent the requirements for submitting supplemental information by submitting the information in the form of an exhibit to a motion to exclude.

In its Order, the Board expunged a declaration that was submitted with Patent Owner’s Motion to Exclude. Petitioner sought authorization from the Board to file a motion to expunge Exhibit 2089, a declaration by Dr. Robert Short in support of Patent Owner’s Motion to Exclude. Rather than authorizing Petitioner’s request, the Board entered the instant Order expunging Exhibit 2089. Continue reading

Granting in Part Request to Submit Certain Supplemental Information IPR2015-00423

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Takeaway: Supplemental information in the form of a second declaration in support of a petition may be allowed by the Board where the supplemental information was previously provided to the patent owner and where the patent owner still has the opportunity to cross-examine the declarant.

In its Decision, the Board granted-in-part Petitioner’s Motion to Submit Supplemental Information. In particular, the Board granted Petitioner’s request to submit a second declaration of Lawrence W. Thau Jr. but denied its request to submit a copy of Patent Owner’s brief filed in district court regarding a motion for summary judgment related to infringement. Continue reading

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

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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

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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

Granting Motion to Submit Supplemental Information IPR2014-00599

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Takeaway: The Board allowed supplemental information to be submitted in accordance with 37 C.F.R. § 42.123(b) when Patent Owner requested the submission in a reasonable time after discovery an internal discrepancy in one of the references being relied on in the trial.

In its Decision, the Board granted Patent Owner’s Request to submit supplemental information. A motion to submit supplemental information filed more than one month after trial is instituted requires a showing of “why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interest-of-justice.” 37 C.F.R. § 42.123(b). Continue reading