Introducing Evidence Before Authorization May Result in Expungement

by | Nov 10, 2021 | Evidentiary Issues, Motions Practice

By Christian Roberts and Matt Johnson –

Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement.  A recent motion met such a fate in Ice Castles, LLC v. Youngstrom, IPR2021-01179, Paper 8 (PTAB Oct. 26, 2021).

In the case, the Patent Owner challenged one of the Petitioner’s asserted references as not qualifying as prior art in its preliminary response.  Accordingly, the Petitioner moved for authorization to file a reply that would introduce several archived webpages to dispute the Patent Owner’s challenge.  In its motion, the Petitioner included exhibits of the proposed webpages it was seeking authorization to introduce.  The inclusion of these exhibits was made without contacting either the PTAB or the Patent Owner.  As a result, the PTAB denied and expunged the Petitioner’s motion.

In its decision, the PTAB cited its rules that “[a] petitioner may seek leave to file a reply to the preliminary response” and that “[a]ny such request must make a showing of good cause.” 37 C.F.R. § 42.108(c).  The PTAB went on to explain that unless pre-authorized, the manner for seeking authorization to file a paper is to contact both the opposing party and the PTAB to arrange for a conference call for authorization. Consolidated Trial Practice Guide at 51-52 (Nov. 2019).  Should a patent owner oppose the request, patent owners should be prepared to explain why denying authorization would be consistent with Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019).

The Petitioner violated the rules by attaching exhibits of new evidence in its motion for authorization to file a reply without contacting either the PTAB or the Patent Owner beforehand.  The PTAB viewed this “self-help strategy” as frustrating its ability to manage the record of the proceeding, and therefore expunged the motion and exhibits.

Takeaway

When seeking permission to include new evidence in a reply to a preliminary response at the PTAB, make sure the “cart” of evidence follows (and is separate from) the authorization request “horse.”

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.