Takeaway: The Board may authorize briefing on a patent owner’s motion to exclude evidence and arguments that are allegedly newly raised in a petitioner’s reply where the same was not presented as part of the petition.

In its Order, the Board addressed Patent Owner’s request for authorization to file a motion to exclude certain evidence. After having conducted a telephone conference with the parties, the Board granted Patent Owner’s request

Patent Owner sought authorization to move to expunge or strike portions of Petitioner’s Replies in IPR2014-01372 and IPR2014-01374 for allegedly containing new arguments or relying on new evidence. In particular, Patent Owner argued that “the Replies cite to new portions of the challenged patents, not cited in the Petition, to support new theories that the patents disclose certain limitations.” In response, Petitioner argued that the allegedly new evidence and arguments were in response to arguments presented in Patent Owner’s Responses. The Board decided to authorize briefing “[g]iven the technical detail in the argument presented.”

Patent Owner also asserted “it was prejudiced because Petitioner did not file expert declarations with the Replies to explain the alleged new theories regarding unpatentability, even though it filed expert declarations with the Petitions.” The Board disagreed, noting that declarations are not required but that “the lack of a declaration is a factor the Board can consider in determining how much weight it gives the arguments in the Replies.” Thus, the Board ordered that Patent Owner not discuss the lack of declarations with Petitioner’s Replies in its Motion, and that Patent Owner cannot move to exclude any sections on that basis.

Smart Modular Technologies Inc. v. Netlist, Inc., IPR2014-01372 and IPR2014-001374
Paper 32: Order on Conduct of the Proceedings
Dated: October 9, 2015
Patents: 8,001,434 B1; 8,359,501 B1
Before: Linda M. Gaudette, Bryan F. Moore, and Peter P. Chen
Written by: Moore