Decision on Waiver of Argument and Denying Request for Additional Pages in Reply CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046


Takeaway: Failing to object to admissibility of evidence will not waive a counter argument against the underlying fact that was being alleged by the non-objected to evidence. A request for additional pages for a Reply will not be granted absent extraordinary circumstances.

In its Order, the Board addressed three separate issues. First, the Board ordered that Patent Owner did not constitute waiver of its argument that a reference is not a “printed publication.” Second, the Board denied Petitioner’s request for three additional pages for its Reply. Third, the Board denied Patent Owner’s contingent request for leave to file motion to submit supplemental information.

Waiver of Argument

Petitioner initiated a call with the Board to discuss whether Patent Owner waived the argument that a reference is not a “printed publication,” because Patent Owner did not serve an objection to evidence under 37 C.F.R. § 42.64(b) concerning the publication date of the reference. Patent Owner disagreed, arguing that an objection under 37 C.F.R. § 42.64(b) is related to the admissibility of evidence, which is not a requirement for challenging the sufficiency of the evidence to establish a particular fact. Patent Owner further argued that whether Petitioner provided sufficient evidence to establish that the reference is a “printed publication” is related to sufficiency of the evidence, and should therefore be submitted in a patent owner response, not an objection to the admissibility of the evidence. The Board agreed with Patent Owner, and added that such an objection would not have been proper where the challenge was on sufficiency and not admissibility.

Denial of Request for Additional Pages

Petitioner requested three additional pages for its Reply to address Patent Owner’s “printed publication” argument. The Board denied the request, because Petitioner’s request did not present extraordinary circumstances that justified three additional pages for its Reply. The Board noted that many petitioners have been able to limit their replies to 15 pages, responding to “printed publication” issues as well as other patentability arguments.

Denial of Motion to Submit Supplemental Information

Patent Owner requested leave to file a motion to submit supplemental information for filing its supplemental evidence served in response to Petitioner’s evidentiary objection. Patent Owner’s request was contingent on whether the Board granted Petitioner’s request for three additional pages for its Reply. Because the Petitioner request was denied, the Board also denied Patent Owner’s request

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046
Paper 29: Order on Conduct of the Proceeding
Dated: May 12, 2014
Patents 8,155,679; 8,457,670; 7,664,516; 8,452,646; 8,438,055
Before: Joni Y. Chang, Michael W. Kim, and Barbara A. Benoit
Written by: Chang