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July 13, 2016Newsletter

This Week at the Board - July 13, 2016

PTAB Expunges Petitioner’s Video Exhibit Filed After Remand By The Federal Circuit
In IPR2013-00132, the PTAB expunged a video exhibit filed by the Petitioner. After the case was remanded by the Federal Circuit, the PTAB ordered the parties to file briefs addressing the impact of the court’s holding on the outcome of the proceeding. The PTAB specifically instructed the parties not to present any new evidence beyond that considered in the final written decision. The video filed by the Petitioner was new evidence that was not considered by the PTAB in rendering its final written decision and could not be considered a demonstrative exhibit because the oral hearing had been held already. Therefore, the PTAB expunged the video exhibit.

A link to the PTAB’s decision is provided here.

PTAB Expunges Preliminary Response That Exceeds The Permissible Word Count And Cautions Practitioners On Use Of Word Processor Word Count

In IPR2016-00535, the Patent Owner filed a preliminary response that contained about 18,000 words, exceeding the 14,000 word limit under the rules, did not use 14 point font, and lacked a certification regarding the word count. The PTAB expunged the preliminary response sua sponte because the preliminary response violated the volume-type limitation under the rules, did not comply with the font size requirement, and did not include the required certification regarding the word count. The PTAB authorized the Patent Owner to file a corrected preliminary response that complied with the rules and ordered the Patent Owner to file a redline version of the corrected response showing the deletions in tracked changes.

In IPR2015-01092, -1102, and -1103, the Patent Owner objected to Petitioner’s replies noting a discrepancy in the certified word count and the actual word count. Patent Owner stated that the reply exceeded the word-count limit based on block quotes appearing in images in the replies. The PTAB stated that a party does not need to go beyond the word count provided by the word processor. But it cautioned the parties not to abuse the process by using excessive words in figures, drawings or images, deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count. The PTAB stated that such abuse might lead to dismissal of a party’s brief.

A link to the PTAB’s decisions are provided here.

PTAB Awards Attorneys’ Fees For Violation Of The Protective Order

In IPR2015-01750, -01751, and -01752, the PTAB awarded in the amount of $13,559.97. In an earlier decision, the PTAB had found that the Patent Owner had breached the default protective order by disclosing Petitioner’s confidential information to three individuals and was in violation of the protective order.  The PTAB also had found that the Petitioner had been harmed by the disclosure.  In that earlier decision, the PTAB imposed sanctions on the Patent Owner and authorized the Petitioner to submit a request for attorneys’ fees. The PTAB granted the request for attorneys’ fees submitted by the Petitioner and ordered the Patent Owner to pay $13,559.97 to Petitioner.

A link to the PTAB’s decisions are provided here.

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