Order Dismissing in Part Motion to Exclude IPR2013-00236

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Takeaway: Neither a motion to strike nor a motion to exclude is the proper vehicle for determining whether a reply exceeds the proper scope.

In its Order, the Board dismissed-in-part Patent Owner’s Motion to Exclude Petitioner’s Reply and a declaration submitted with Petitioner’s Reply. Patent Owner argued that those documents should be excluded because (1) they are based on an incorrect claim interpretation, (2) the declarant’s testimony is contradictory and unreliable, and (3) they make new arguments that are not responsive to the Patent Owner’s Response.  Petitioner argued that the first two points go to the weight of the declarant’s testimony, not its admissibility, and that the third point is not appropriate for a motion to exclude.  Petitioner cited to a previous order in this proceeding refusing to authorize a motion to strike the documents and a similar situation in Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Paper 42 (May 12, 2014).  Petitioner then requested that the motion be dismissed.

The Board was not persuaded that the first two portions of the Motion should be dismissed, but agreed with Petitioner as to the third portion. The Board stated that a motion to strike or exclude evidence is not normally the proper vehicle for resolution of a dispute regarding the proper scope of a reply.  The Board reiterated that it will determine whether the Reply exceeded the proper scope when reviewing the pertinent papers and preparing the final written decision.  Therefore, the Board dismissed that portion of the Motion, but directed the Petitioner to file an opposition to the Motion as to the remaining portions.

Samsung Electronics Co., Ltd. v. Unifi Scientific Batteries, LLC, IPR2013-00236
Paper 42: Order on Conduct of the Proceeding
Dated: May 23, 2014
Patent 6,791,298 B2
Before: Joni Y. Chang and Justin T. Arbes
Written by: Arbes