Takeaway: It is improper to present material in a party’s demonstrative exhibits that was not previously made of record in the proceeding.
In its Order, the Board sustained-in-part and overruled-in-part certain objections that Petitioner had made with respect to the propriety of certain of Patent Owner’s demonstrative exhibits. In particular, the Board sustained Petitioner’s objection to Patent Owner’s Exhibits 2006 and 2007; sustained Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 7-12 and 15 and overruled Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 19 and 20; ordered that Patent Owner’s Exhibits 2005, 2006, and 2007 be expunged; barred Patent Owner from using during the oral hearing any material from pages 7-11 and 15 of Exhibit 2005 or any material from either Exhibit 2006 or Exhibit 2007; and authorized Patent Owner to replace Exhibit 2005 with a new demonstrative exhibit.
Petitioner had argued that it was unfairly prejudiced by the late introduction of material by Patent Owner not previously made of record. According to Petitioner, this late introduction prevented Petitioner from having the opportunity to subject the late-introduced material to study by Petitioner’s expert witness. Of interest in this regard were the subject matter of pages 7-11 and 15 of Exhibit 2005, and the animations of Exhibits 2006 and 2007, which had not been presented earlier in the record. Petitioner had further argued that an excerpt from page 12 of Exhibit 2005 was not a precise quotation of the cited material, and that certain material quoted on pages 19 and 20 of Exhibit 2005 relates to “evidence not properly cited or relied upon by either party elsewhere in the record.”
In response, Patent Owner asserted that the information from Exhibits 2006 and 2007 and pages 7-11 and 15 of Exhibit 2005, rather than adding new information, merely presented information previously made of record in different form. Patent Owner argued as to pages 7-11 of Exhibit 2005 that these pages were simply reproductions of Fig. 2 of the ’575 patent but with reference numbers removed or added. Patent Owner contended that page 15 of Exhibit 2005 was just an enlargement of part of Exhibit 2004. Patent Owner argued that Exhibit 2006 was simply a “straightforward animation” of Figs. 5a-d and 6a-d. And Patent Owner asserted that the animation of Exhibit 2007 was being submitted to visually replicate Patent Owner’s arguments regarding inflation of the claimed stent.
The Board ended up barring Patent Owner from using, citing, or otherwise relying on any material from Exhibit 2006, Exhibit 2007, or pages 7-11 and 15 of Exhibit 2005, because these sources impermissibly contained new material not previously made of record. However, the Board ruled that Patent Owner may replace the barred material with material that was already timely made of record in this proceeding. Although the Board found that certain material from page 12 of Exhibit 2005 was not an exact quotation of evidence being cited, the Board allowed Patent Owner to submit a revised version of this page with the inaccurately quoted material corrected. The Board ordered Exhibits 2005, 2006, and 2007 to be expunged from the record, but authorized Patent Owner to present a replacement demonstrative exhibit for Exhibit 2005.
Trivascular, Inc. v. Shaun L. W. Samuels, IPR2013-00493
Paper 39: Order on Conduct of the Proceeding
Dated: September 2, 2014
Before: Toni R. Scheiner, Richard E. Rice, and Scott E. Kamholz
Written by: Kamholz