Takeaway: The proper way to address testimony submitted in support of a reply is not to file a motion to strike, but rather to cross-examine the reply declarant and file a concise motion for observation regarding the cross-examination.
In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion to Strike two declarations and Petitioner’s Reply, and granted Patent Owner’s Motion for Leave to File a Motion for Observation Regarding Cross-Examination of a Reply Witness.
Regarding the Motion to Strike, Patent Owner stated that Petitioner’s Reply and one of the declarations (Exhibit 1017) exceed the scope of a reply, and that both declarations (Exhibits 1017 and 1018) were filed in violation of 37 C.F.R. § 42.223, which requires a party to seek prior authorization before filing supplemental information. The Board stated that it will determine whether the Reply and evidence are outside the scope of a proper reply when it reviews all evidence and prepares a final written decision. Further, Exhibit 1018, which was relied upon by Petitioner in connection with its Opposition to Patent Owner’s Motion to Amend, is proper rebuttal evidence and is not considered “supplemental information” under 37 C.F.R. § 42.223.
Regarding the Motion for Observation, the Board noted that Patent Owner may cross-examine reply declarants and file a Motion for Observation regarding the cross-examination. The Motion should be used to draw the Board’s attention to relevant cross-examination testimony of a reply witness. The Observation must be concise and is not an opportunity to raise new issues, re-argue issues, or to pursue objections. Observations should not exceed one short paragraph each and are limited to 15 pages total. Petitioner may file a response that is limited to 15 pages as well. Each Observation should be in the following form:
In exhibit __, on page __, lines __, the witness testified ___. The testimony is relevant to the ___ [stated or argued] on page __, lines __ of ____. The testimony is relevant because ___.
Volusion, Inc. v. Versata Software, Inc. and Versata Development Group, Inc., CBM2013-00017, CBM2013-00018
Paper 36: Order on Conduct of the Proceeding
Dated: April 25, 2014
Patents 6,834,282 B1; 7,426,481 B1
Before: Howard B. Blankenship, Sally C. Medley, and Kevin F. Turner
Written by: Medley