In an Order for the Conduct of the Proceedings in Atrium Medical Corp. v. Davol, Inc., [IPR2013-00189], Paper 48 (February 28, 2014), the Board advised the patent owner that each item included as an observation on cross-examination should be precise, preferably no more than one short sentence in the explanation of relevance. Observations on cross-examination are not meant to serve the purpose of an argumentative surreply. The relevance of record portions noted, relative to the observed cross-examination testimony, should “jump-out” upon notice. If more than one or two sentences are required to explain such relevance, the observations likely is improper.

An observation (or response) is not an opportunity to raise new issues, to re-argue issues, or to pursue objections. Each observation should be in the following form:

In exhibit __, on page __, lines __, the witness testified __. This testimony is relevant to the __ on page __ of __. The testimony is relevant because __.

The entire observation should not exceed one short paragraph. The Board may decline consideration or entry of excessively long or argumentative observations (or responses). A rule of reason applies to so called “combined” observations of more than one item.

A party seeking to file supplemental evidence under 37 C.F.R. § 42.64(b)(2) must receive Board authorization to file such evidence, because the rule contemplates serving such evidence, but not filing such evidence. Likewise, a party seeking to file supplemental information under 37 C.F.R. § 42.123, must receive Board authorization to do so.  See, Facebook, Inc, v. Software Rights Archive, LLC, [IPR2013-00478], Paper 26, (March 3, 2014).

Objections to evidence must be served, but not filed. 37 C.F.R. § 42.64(b)(1).  Objections that are filed will be expunged.  See, Facebook, Inc, v. Software Rights Archive, LLC, [IPR2013-00478], Paper 26, (March 3, 2014).

In Medtroinc. Inc., v NuVasive, Inc., [IPR2014-00075], Paper 10 (February 28, 2014), Medtronic wanted to submit a corrected certificate for the translation of Exhibit 1002, but the NuVasive opposed arguing the that corrected certificate was supplemental infomration that could only be submitted after trial had been declared.  The Board considered the corrected certificate, which merely added the perjury warning, would amount to the correction of a clerical error under 37 C.F.R. § 42.104(c), not the filing of supplemental information under 37 C.F.R. § 42.123(a).

Most Conduct of Proceeding Orders issued by the Board are unremarkable, but in Mobotix Corp. v, e-Watch, Inc., [IPR2013-00499], Paper 16 (Feburary 28, 2014), the patent owner sought a six month delay in the proceedings because it was involved in a total of eight inter partes review proceedings (only one other involving the currently challenged patent, U.S. Patent No. 7,228,429 (IPR2013-00335)).  The Board rejected the delay, noting that delaying the trial for 6 months would mean it could not be completed within the one-year time period required by statute.

The same trick also did not work in Mobotix Corp. v, e-Watch, Inc., [IPR2013-00498], Paper 13 (Feburary 28, 2014), involving U.S. Patent No. 7,023,913, which is also the subject of IPR2013-00337.

 In Ube Maxell Co., Ltd. v. LG Chem, Ltd., [IPR2013-00471], Paper 29, (February 28, 2014) the Board again denied rehearing of one its decisions to Institute Inter Partes Review.  The Petitioner argued that the failure to intstitute a proceeding as to certiain of the assrted grounds was error, and the Board examined each gounds but was not persuaded that it misapprehended or overlooked any argument Ube Maxell actually advanced in the Petition.  The Board instructed that a request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).