In its Order, the Board denied Patent Owner’s request to file a motion to strike a declaration filed by Petitioner with its Reply. Patent Owner argued that Petitioner relied, for the first time, upon results of testing that should have been presented in connection with Petitioner’s Petition. The Board ruled that a ruling on such a motion is premature. Whether a reply contains arguments or evidence that is outside the scope of a proper reply is left to the determination of the Board. If there are improper arguments and evidence presented with a reply, the Board may exclude the reply and related evidence without any motion made by a patent owner. The Board also explained that a motion to exclude would not be a proper forum for raising similar arguments, because motions to exclude should only relate to admissibility of evidence (e.g., authenticity or hearsay).
The Board also took the opportunity to remind the parties of the proper procedure for requesting a conference call, which is an email requesting a conference call copying the other party, indicating generally the relief being requested or the subject matter of the conference call, stating whether the opposing party opposes the request, and including times when all parties are available.
Carl Zeiss SMT GMBH v. Nikon Corp., IPR2013-00362
Paper 23: Order on the Conduct of the Proceeding
Dated: June 5, 2014
Patent: 7,348,575 B2
Before: Howard B. Blankenship, Sally C. Medley, and Matthew R. Clements
Written by: Medley