Denying Leave to File Motion to Submit New Evidence IPR2014-00384


Takeaway: While new testimonial evidence is not permitted with the filing of a patent owner preliminary response, the Board may authorize the filing of additional non-new testimonial evidence with the preliminary response.

In its Order, the Board denied authorization for the filing of a declaration by Patent Owner with its Preliminary Response but authorized the filing of additional pages of an alleged prior art reference.

The Board cited to 37 C.F.R. § 42.l07(c), which states that a patent owner preliminary response “shall not present new testimony evidence beyond that already of record, except as authorized by the Board.”  The Board also noted that authorization would only be granted if the addition of the new testimony evidence were in the interests of justice.

Patent Owner had requested authorization to file a declaration addressing the public availability of a prior art reference, the Begley document. Patent Owner also requested authorization to file additional pages from the Begley document that were allegedly missing from the exhibit filed with the Petition.  Patent Owner indicated that the additional pages discussed confidentiality restrictions that were associated with the Begley document, supporting the argument that the document was not publicly available.  Patent Owner argued that allowing the additional evidence “would be within the interests of justice because the Board could arrive at an incorrect decision in considering the Begley document which should not be considered a printed publication.”

The Board held that allowing the new testimonial evidence would not be in the interests of justice and that Patent Owner would have the opportunity to include that testimonial evidence with its Patent Owner Response if trial were instituted. Patent Owner would also have the ability to object to the evidence in the Petition.  Thus, Patent Owner had other avenues beyond submitting the new testimonial evidence with its Preliminary Response.

However, the Board authorized the submission of the additional pages from the Begley document, and arguments thereto, with the Preliminary Response. Disagreeing with Petitioner’s argument that the submission would be prejudicial as it would not have an opportunity to respond to the new evidence prior to institution, the Board stated that it was “not persuaded that the Rules require non-new testimonial evidence to be excluded from a preliminary response.”

Zetec, Inc. v. Westinghouse Electric Co., IPR2014-00384
Paper 9: Order on Conduct of the Proceeding

Dated: May 6, 2014

Patent 6,823,269

Before: Howard B. Blankenship, Kevin F. Turner, and Neil T. Powell
Written by: Turner