Expunging Unauthorized Motion to Exclude and Reply to Preliminary Response IPR2014-00439


Takeaway: Although the Board’s rules preauthorize parties to file motions to exclude after the discovery period concludes, the Board may expunge unauthorized motions to exclude filed during the discovery period.

In its Order, the Board expunged Petitioner’s Motion to Exclude and its Reply to Patent Owner’s Preliminary Response because Petitioner failed to obtain the Board’s authorization to file either paper.

The Board expunged Petitioner’s Motion to Exclude because its rules do not permit an unauthorized filing of a motion to exclude prior to the completion of the discovery period. Although the Office Patent Trial Practice Guide provides that parties may file motions to exclude without obtaining Board authorization, the Board observed that the Guide’s preauthorization rule applies only after “the time for taking discovery in the trial has ended.”  77 Fed. Reg. 48,756, 48,758.  According to the Guide, the Board then issues a scheduling order, which preauthorizes motions to exclude.  Because Petitioner filed its Motion to Exclude before the discovery period had concluded, the Board determined that the filing was not authorized under the rules.

Moreover, the Board noted that Petitioner failed to obtain authorization to file its Reply to Patent Owner’s Preliminary Response, and the Board’s rules do not permit petitioners to file replies absent the Board’s authorization. Accordingly, the Board also expunged the Reply.

Iron Dome LLC v. E-Watch, Inc., IPR2014-00439
Paper 13: Order on Conduct of the Proceeding
Dated: July 16, 2014
Patent 7,365,871
Before: Jameson Lee, Gregg I. Anderson, and Matthew R. Clements
Written By: Clements