Takeaway: Many decisions on what evidence the Board will consider will be provided when preparing its final written decision. Thus, a party should be careful to ensure all evidence is provided properly, because there will likely be no opportunity to fix any errors.
In its Order, the Board denied Patent Owner’s motion to dismiss without prejudice the Petitioner’s replies in both proceedings. Patent Owner argued that the replies should be dismissed for the following reasons: (1) improper incorporation by reference under 37 C.F.R. § 42.6(1)(3); (2) exceeding the scope of the reply under 37 C.F.R. § 42.23(b); and (3) exceeding the scope of prior art available in an IPR under 35 U.S.C. § 311.
The Board indicated that it would determine whether the replies and evidence were outside the scope of a proper reply when reviewing all the briefing and in preparing its final written decision. At that point in time, the Board could exclude the reply or related evidence, and determine whether material had been improperly incorporated by reference. Petitioner runs the risk that the material would not be considered.
The Board also reminded the parties that they are permitted to cross-examine reply declarants. The parties may also file motions for observation regarding cross-examination of a reply witness to draw the Board’s attention to relevant cross-examination testimony of a reply witnesses. Each observation should be limited to one short paragraph, and the entirety of the observations should be limited to five pages.
Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, IPR2013-00208
Paper No. 46: Order on Conduct of the Proceeding
Dated: March 28, 2014
Patent 8,251,997 B2
Before: Sally C. Medley, Lora M Green, and Stephen C. Siu
Written by: Medley