Conduct of the Proceeding CBM2014-00184, -00185


Takeaway: When Petitioner objects to Patent Owner’s Response and an accompanying Declaration, Patent Owner cannot file corrected versions unless a motion to submit supplemental information is first authorized and granted.

In its Decision, the Board denied Patent Owner’s and Petitioner’s requests to expunge a declaration submitted with Patent Owner’s Response and also denied Patent Owner’s request to submit substitute a Corrected Patent Owner’s Response and Amended Declaration.

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Granting Leave to File Motion to Exclude Allegedly Newly Raised Evidence and Arguments IPR2014-01372, 01374

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

Denying Motion to Expunge Information Regarding Manufacturing Practices and Customers IPR2014-00309

Takeaway: That a patent owner may have availed itself of the commercial benefits of its patent grant in negotiating with customers and potential customers does not, without more, justify sealing portions of the record from public disclosure.

In its Order, the Board denied Patent Owner’s post-hearing motion to expunge sealed versions of certain exhibits. Specifically, Patent Owner sought to seal deposition transcripts of two Saint-Gobain employees and named inventors of the ‘640 patent that was challenged in the instant IPR proceeding. Continue reading

Order Denying Motion to Expunge Where no Prejudice Exists IPR2014-00500

Order Denying Motion to Expunge Where no Prejudice Exists IPR2014-00500

Takeaway: The Board has discretion to allow late-filed exhibits to remain in the record where the party filing a corresponding motion to exclude would not be prejudiced by such a result and where allowing the exhibits to remain in the record would be in the interests of justice.

In its Order, the Board denied Patent Owner’s Motion to Expunge. Patent Owner had filed the Motion to expunge certain exhibits from the record because, according to Patent Owner, such exhibits were not timely filed.

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Expunging Declaration Held to be Improperly Submitted as Exhibit to Motion to Exclude IPR2014-00552

Takeaway: A party may not circumvent the requirements for submitting supplemental information by submitting the information in the form of an exhibit to a motion to exclude.

In its Order, the Board expunged a declaration that was submitted with Patent Owner’s Motion to Exclude. Petitioner sought authorization from the Board to file a motion to expunge Exhibit 2089, a declaration by Dr. Robert Short in support of Patent Owner’s Motion to Exclude. Rather than authorizing Petitioner’s request, the Board entered the instant Order expunging Exhibit 2089. Continue reading

Denying Motion to Seal That Relied Upon Designation of Documents as Highly Confidential IPR2015-00266

Takeaway: Merely being designated “highly confidential” by the opposing party in a related district court case is not sufficient to demonstrate good cause to seal documents in an IPR. If a party asserts that a portion of the other party’s submission is confidential, then that other party should file the information as a confidential exhibit and the first party should file a corresponding motion to seal.

In its Decision, the Board denied Patent Owner’s revised motion to seal (Paper 22) and granted Petitioner’s motion to expunge and replace (Paper 28). Previously, the Board issued an order providing guidance as to the requirements for a motion to seal. Patent Owner thereafter filed a motion to seal two deposition transcript exhibits from related district court litigation. Continue reading

Denying Request to File Corrected Patent Owner Response Removing Citations to Expunged Exhibit CBM2014-00133, 135

Takeaway: Arguments that rely upon statements made in an exhibit that is later expunged would be considered attorney argument, which is to be given little or no weight, such that there would be no need for cross examination of the person who made the statements.

In its Order, the Board granted Patent Owner’s request to expunge an exhibit and denied Petitioner’s request that Patent Owner be ordered to file a corrected Patent Owner Response. Continue reading

Granting Motion to Expunge IPR2013-00453

Takeaway: A party moving to expunge documents from the record must show good cause, and demonstrating a “good-faith effort to preserve portions of the record” relevant to the Board’s Decision while striking an “appropriate balance between the public policy for an open record and the legitimate need to protect confidential information from disclosure” will likely be persuasive.

In its Decision, the Board granted Petitioner’s Motion to Expunge certain papers and exhibits. The Board had previously terminated the proceeding and denied Petitioner’s Rehearing Request. Petitioner then filed the instant Motion seeking to expunge “the unredacted, sealed versions of Papers 21, 35, 42, and 48, and Exhibits 2017, 2018, 2020-2033, and 2040.” Petitioner also filed redacted versions of several exhibits. Continue reading

Expunging Preliminary Response IPR2015-00009

Takeaway: A party claiming to have all substantial rights to a challenged patent must set forth evidence to support its assertion for the Board to consider papers filed by the party.

In its Order, the Board ordered that the Preliminary Response filed by Fluidigm will be expunged unless within five business days of the Board’s Order, a paper is filed “that shows cause why Fluidigm should be entitled to file a preliminary response to the Petitions.” Continue reading

Order on Request to Expunge Evidence or Argument CBM2014-00182

Takeaway: The Board will expunge from the record and will not consider with a Preliminary Response any new testimony that is taken specifically for the proceeding at issue.

In its Order, the Board ruled on Petitioner’s request that the Board expunge certain exhibits from the record and strike any corresponding argument in Patent Owner’s Preliminary Response. According to Petitioner, the exhibits and Preliminary Response included new testimonial evidence in violation of 37 C.F.R. 42.207(c). Continue reading