Takeaway: Petitioners need not focus on issues in their Reply that have already been decided in the proceeding, and responses to a patent owner’s statement of material facts in dispute could be presented as an appendix to the Reply and not be counted against the 15 page limit.

In its Order, the Board clarified procedural rules and denied Petitioners’ request for three additional pages in their Reply to the Patent Owner Response. First, in response to Petitioners’ question regarding how to respond to Patent Owner’s “Statement of Material Facts in Dispute,” the Board directed Petitioners to 37 C.F.R. § 42.24(c) indicating that Petitioners should include a short response that admits, denies, or otherwise indicates they cannot admit or deny, but it can be included as an appendix to the Reply and not be part of the fifteen page limit. However, if Petitioners wish to include an additional statement of facts, that must be included in the fifteen page limit. The Board then addressed Petitioners’ inquiry regarding submission of additional excerpts of a book into the record where Patent Owner had filed only certain portions of the book. The Board stated that Petitioner may submit additional excerpts of the book as long as they are within the scope of proper rebuttal. Finally, the Board denied Petitioners’ request for three additional pages for their Reply, stating that the request did not present extraordinary circumstances justifying the additional pages because there are only three grounds of unpatentability based on two references, and Petitioners do not need to address issues in their Reply that have already been decided in the proceeding.

Oracle Corp., Oracle OTC Subsidiary LLC, Ingenio LLC, and Yellowpages.com LLC v. Click-to-Call Technologies LP, IPR2013-00312
Paper 42: Order on Conduct of the Proceedings
Dated: March 27, 2014
Patent 5,818,836
Before: Michael R. Zecher and Trenton A. Ward
Written by: Zecher