Takeaway: A reply brief may only respond to arguments raised in the corresponding opposition, and any “mischaracterizations” of expert testimony in a brief will be weighed by the Board rather than excluded from the record.
The Board ordered production of pages of a deposition transcript requested by Petitioner; ordered Patent Owner’s replies on its motions to amend be revised; and denied Patent Owner’s motions to exclude evidence.
Motion to Compel
Petitioner requested authorization to file a motion to compel production of a deposition transcript and expert report that allegedly contain inconsistent relevant information on claim construction. The documents are subject to a protective order in a parallel district court litigation involving Patent Owner and a third party. Petitioner agreed to limit its production to a portion of the transcript that the Board believed will eliminate any confidentiality concerns. The parties then agreed to the production.
Petitioner’s Motions to Strike
Petitioner contended that Patent Owner’s replies on its motions to amend the accompanying declarations go beyond the proper scope permitted for replies. A reply may only respond to arguments raised in a corresponding opposition. 37 C.F.R. § 42.23(b). The Board found that three of the four replies went beyond the permissible scope, and ordered the Petitioner to revise the replies accordingly. For example, the reply included a 50-page supplemental declaration, a 39-page claim chart purporting to provide 35 U.S.C. § 112 support for the claim amendments, and an appendix listing 191 references or documents that the expert reviewed to conclude that he did not discover any art that anticipates or renders the claims obvious.
Patent Owner’s Motions to Exclude
Patent Owner alleged that Petitioner has “mischaracterized” expert testimony in the opposition to Patent Owner’s motions to amend. The Board determined that any “mischaracterizations” would be weighed by the Board, and that the Board would not be confused, misled or prejudiced by this testimony.
Veeam Software Corp. v. Symantec Corp., IPR2013-0014-143, 150
Paper 35: Order on Conduct of the Proceeding
Dated: April 7, 2014
Patent 6,931,558; 7,191,299; 7,093,086
Before: Francisco C. Prats, Meredith C. Petravick, Thomas L. Giannetti, and Trenton A. Ward
Written by: Giannetti