Granting Sua Sponte Motion to Exclude Demonstrative Exhibit IPR2013-00357


Takeaway: Any exhibits or arguments that are presented at the final oral hearing, including demonstrative exhibits, must have been presented in a prior paper.

In its Order, the Board excluded certain slides of Patent Owner’s demonstrative exhibits. Petitioner objected to those slides because they contained (1) a new picture of Figure 2 that was not presented identically in the trial history; and (2) lines which had been altered in that figure.  Patent Owner argued that the portions of the objected to slides are intended to be a tutorial on the patent at issue and are based on descriptions in its brief, but acknowledged that the graphics do not appear in the brief or other papers.

The Board stated that the trial before the Board is unlike a district court trial because it is conducted on paper, therefore, nothing new can be presented at the oral hearing. Whatever a party wants to present at the hearing should have already been presented in some other paper.  Therefore, the Board directed Patent Owner to take out the slides that included the new drawings, and allowed Patent Owner to substitute drawings directly from the patent.

Spectra Logic Corporation v. Overland Storage Inc., IPR2013-00357
Paper 24: Order on Conduct of the Proceeding
Dated: July 22, 2014
Patent 6,328,766
Before: Kevin F. Turner, James A. Tartal, and Matthew R. Clements
Written by: Turner