Takeaway: The Board will decline to consider arguments or evidence that is not discussed in the patent owner response, and thus such a violation cannot be a basis for the other party obtaining authorization for additional pages for its response/reply.

In its Order, the Board denied Petitioner’s request for authorization to file additional pages with its Reply. Petitioner requested additional pages for its Reply, because Patent Owner’s Response was accompanied by 110 exhibits and Petitioner was concerned that Patent Owner had effectively circumvented the rule limiting the number of pages for the Response. The Board determined that Petitioner had not presented a sufficient reason to supports its request for extra pages for its Reply. Further, the Board stated that “[t]o the extent that [Patent Owner] included arguments or evidence in the 110 exhibits that are not also supported by its Patent Owner Response, those arguments and evidence will not be considered when we prepare our final decision.”

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00517
Paper 56: Order on Conduct of the Proceeding
Dated: July 29, 2014
Patents 7,566,537 B2
Before: Lora M. Green, Francisco C. Prats, and Scott E. Kamholz
Written by: Green