Takeaway: Where a party contests the authenticity of an exhibit, the Board may permit the other party to submit supplemental information authenticating the exhibit, even shortly before oral argument, if the objecting party is not unduly prejudiced.
In its Order, the Board granted Petitioner’s Request to File a Motion to Submit Supplemental Information pursuant to 37 C.F.R. § 42.123(b). One of the major issues throughout the proceedings has been the authenticity of Exhibit 1002, which is an Internet posting of a purported press release. Petitioner recently obtained a copy of the original using the services of an investigator and wished to submit Exhibit 1182, an affidavit of the investigator, as supplemental information. Patent Owner opposed the Request on the grounds that it was prejudicial in view of the late stage of the proceedings, with oral argument less than 3 weeks away. However, the Board concluded that Patent Owner would not be unduly prejudiced because it was already contemplating filing an additional paper—a motion to expunge Exhibits 1182 and 1183—before the hearing date and that permitting the parties to file papers concerning the exhibits would preserve the issue for any appeal.
After granting Petitioner’s Request, the Board set a briefing schedule and ordered the parties to work together to arrange for the deposition of the investigator. The Board noted that Patent Owner’s Opposition to the Motion to Submit Supplemental Information could include any objections to the evidence discussed in Petitioner’s Motion as well as any observations on the cross-examination of the investigator. It also reminded Patent Owner that an observation is not an opportunity to raise new issues, to re-argue issues, or to pursue objections but instead is to briefly identify relevant testimony, explain what it is relevant to, and why.
BioMarin Pharm. Inc. v. Genzyme therapeutic Products Ltd. P’ship., IPR2013-00534, 537
Paper 67: Order on Conduct of the Proceedings
Dated: September 19, 2014
Patent 7,351,410 and 7,655,226
Before: Lora M. Green, Jacqueline Wright Bonilla, and Sheridan K. Snedden Written by: Green