Takeaway: When the Board follows its typical practice of waiting until after oral argument to determine if reply evidence was improperly submitted , a patent owner relies on that evidence at its own peril because it risks basing its arguments on improper evidence that ultimately is not considered.

In its Order, the Board denied Petitioner’s request for permission to file a motion to strike Patent Owner’s reply exhibits.

Petitioner contended that seven exhibits submitted with Patent Owner’s reply included new evidence concerning conception, diligence, and suitability for intended use were part of Patent Owner’s prima facie case of prior invention and should not have been submitted for the first time in a reply. Petitioner also argued that it was deprived of the opportunity to present expert testimony on the evidence and to respond to the new evidence in a brief. Patent Owner argued that it had raised the prior invention arguments earlier and that the new exhibits merely were submitted to respond to specific arguments Petitioner made in its opposition brief.

The Board noted that it can determine for itself whether the objected-to evidence was improperly submitted—and, if so, disregard it— and then declined to deviate from its typical practice of waiting until after oral hearing to determine if any reply evidence was improperly submitted. However, it cautioned Patent Owner that it relies on any newly submitted evidence at its own peril because it risks basing its prior invention argument on evidence that, ultimately, may not be considered because it was improperly submitted.

Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578
Paper 33: Order on Conduct of the Proceeding
Dated: September 25, 2014
Patent 8,231,804
Before: Rama G. Elluru and Christoper L. Crumbley
Written by: Crumbley