Order Providing Guidance on Motions to Exclude and Strike IPR2013-00288

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Takeaway: The Board does not want to see any motions arguing that a party’s reply contains new arguments or evidence.

In its Order, the Board advised the parties that neither a motion to strike nor a motion to exclude is the proper mechanism to argue that the other party’s reply contains new arguments or evidence. The Board also authorized Patent Owner to file a motion for observation and Petitioner to file a response to Patent Owner’s observation.

Patent Owner requested a conference call seeking (1) guidance from the Board about whether a motion to strike “is a proper mechanism to argue that Petitioner’s reply contains new arguments and to exclude Petitioner’s expert declaration filed in support of its reply” and (2) leave to file a motion for observation. Patent Owner argued that Petitioner’s Reply and expert declaration filed with the Reply were not proper because no expert declaration was filed in support of the Petition, and the declaration “should have been presented with the petition.”

The Board explained that “neither a motion to strike nor a motion to exclude is a proper mechanism to present argument that a reply contains new arguments.” Instead, the issue of “whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to the determination of the Board,” which will decide the issue when reviewing all of the parties’ briefs.

The Board then granted Patent Owner authorization to file a motion for observation regarding cross-examination of a reply witness. The Board also granted Petitioner authorization to file a response to Patent Owner’s observation.  The Board instructed the parties that observations and responses to the observations must be concise statements and not opportunities to raise new issues, re-argue issues, or pursue objections.

Ultratec, Inc. v. Sorenson Communications, Inc., Captioncall, LLC, and Wilmington Trust, National Association, IPR2013-00288
Dated: May 23, 2014
Patent 8,379,801 B2
Before: Kevin F. Turner and Joni Y. Chang
Written by: Chang