Granting Leave to File Revised Motion for Observations IPR2013-00323


Takeaway: A motion for observations is typically limited to 15 pages, and should include a single short paragraph for each observation with an explanation of relevance that is not elaborate or argumentative.

In its Order, the Board authorized Patent Owner to file a revised motion for observations on cross-examination of Petitioner’s Reply declarant. Petitioner did not oppose this authorization. At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations.

The Board previously authorized Patent Owner to file a Motion for Observations, which Patent Owner filed. However, there was a dispute over the Motion between Patent Owner and Petitioner. The two parties agreed on a solution, asked the Board for permission to carry out their solution, and the Board agreed.

The Board also explained the requirements for a motion for observations. The page limit on such a motion is 15 pages, it should not contain any arguments, and each observation must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit. Also, the pertinent cross-examination testimony should be reproduced in the observation directed to that testimony rather than merely referenced by page and line number of an exhibit, except where the pertinent testimony is relatively long.

A response to a motion for observations should not be argumentative, and is not likely needed if the motion for observations is not argumentative and merely identifies evidence to be considered together with particular cross-examination testimony.

Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323
Paper 43: Order on Conduct of the Proceedings
Dated: June 19, 2014
Patent 7,783,299
Before: Jameson Lee, Joni Y. Chang, and Michael W. Kim
Written By: Lee