Order Denying Motion to Exclude IPR2013-00368


Takeaway: More than one motion to exclude can be filed by each party, but the total count of pages cumulative over all motions to exclude cannot exceed the fifteen-page limit per party.

In its Order, the Board addressed a number of evidentiary issues raised first in a chain of emails and then during a conference call held on March 24, 2014. The Board authorized Patent Owner to file a substitute exhibit to the Patent Owner Response. A number of appendices were apparently omitted from the Exhibit due to a clerical error. The Board ordered that Petitioner must serve any objections to the appendices within five days of service of the substitute Exhibit.
Petitioner also sought to exclude the Exhibit on the basis that it was inadmissible under 37 C.F.R. § 42.65(a) as being expert testimony on patent examination practice. Although the Board disagreed, it authorized Petitioner to file a motion to exclude the evidence. The Board reminded the parties that more than one motion to exclude could be filed by each party, but that the total count of pages cumulative over all motions to exclude could not exceed the fifteen-page limit per party and that the applicable due dates must be observed.

Finally, Petitioner sought to strike another of Patent Owner’s exhibits to Patent Owner Response on the grounds that the Exhibit was an attempt to circumvent the page limit for the Patent Owner Response. Because the Board and parties agreed that the Exhibit did not address any issue presented in the petition, the Board did not authorize any motion to strike the Exhibit and noted that the Exhibit would be given little or no consideration.

As a follow-up, in Paper No. 43, the Board commented on Patent Owner’s attempted filing of the substitute Exhibit. The substitute Exhibit was filed with a motion to substitute the exhibit and expunge the original exhibit. However, no certification was provided stating that the exhibit was identical to the original except for the inclusion of the omitted appendices. The Board provisionally granted the motion to substitute the Exhibit on the condition that Patent Owner submit a certification as noted above.

Amneal Pharmaceuticals, LLC v. Supernus Phamaceuticals, Inc., IPR2013-00368
Papers 42 and 43: Order Conduct of the Proceeding
Dated: March 26, 2014
Patent 8,206,740
Before: Lora M. Green, Scott E. Kamholz, and Georgianna W. Braden
Written by: Kamholz