Takeaway: Testimony evidence is not permitted to be submitted with the patent owner preliminary response, but the Board does have discretion to permit such evidence, if it is in the interests of justice.

In its Order, the Board denied Patent Owner’s request to file the deposition testimony of an expert, taken in a related IPR proceeding, with its Preliminary Response. During a conference call, Patent Owner argued that the transcript of the deposition of Petitioner’s expert in a related IPR proceeding included testimony relevant to limitations in claims 72-82 of the ’216 patent.  Further, Patent Owner argued that contentions made by the expert in the petition for this proceeding were refuted by statements made by that expert during his deposition in the other proceeding.

The Board noted that a patent owner preliminary response “shall not present new testimony evidence beyond that already of record, except as authorized by the Board.” The Board has discretion to permit new testimonial evidence in a preliminary response if the patent owner demonstrates that such evidence is in the interests of justice.  However, the Board did not find that this evidence was demonstrated such evidence is in the interests of justice.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-01365 Paper 11: Order on Conduct of the Proceedings 
Dated: November 14, 2014 
Patent: 8,329,216 B2 
Before: Toni R. Scheiner, Jacqueline Wright Bonilla, and Sheridan K. Snedden Written by: Bonilla