Keep Your Objections to Yourself (or at least Don’t Share Them with the Board)

When a patent owner objects to the evidence submitted by the Petitioner, the Patent owner should serve (but not file) objections within ten days of the institution of the proceeding.  37 C.F.R. § 42.64(b)(1).  In SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 15, IPR2014-00680, Paper 15 (October 15, 2014) the Board reminded the patent owner of this fact, expunging the objects filed by the patent owner.  The Board explained:

The Board’s Rules do not require, nor have we authorized, the parties to file objections to evidence with the Board. See SIPNet EU SRO v. Straight Path IP Group, Inc., Case No. 2013-00246, slip op. 3 (PTAB Dec. 12, 2013) (Paper 28). Such objections, and any supplemental evidence served in response, are only to be filed with the Board in the event they later become the basis of a Motion to Exclude Evidence. See Sealed Air Corp. v. Pregis Innovative Packaging, Inc., Case IPR2013-00554, slip op. 2–3 (PTAB Apr. 1, 2014) (Paper 18).

 

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.