Takeaway: A party may still have an opportunity to present supporting evidence to oppose a motion to exclude, even if supplemental evidence was not filed in response to the moving party’s objections to the evidence that is subject to the motion to exclude.

In its Order, the Board authorized Petitioner to file an Opposition to Patent Owner’s Motion to Exclude, including appropriate supporting evidence. The Board also indicated that no authorization was needed for Patent Owner to substitute its back-up counsel, which requires only the filing of updated mandatory notices.  The Board also clarified how the oral hearings would proceed in the three related inter partes review proceedings.

With respect to Patent Owner’s Motion to Exclude, Petitioner sought authorization to file an opposition and submit supporting evidence. Patent Owner argued that Petitioner should not be allowed to submit any evidence with the opposition, in particular, because Petitioner did not file any supplemental evidence under 37 C.F.R. § 42.64(b)(2) in response to Patent Owner’s objections to Petitioner’s evidence that is subject to the Motion to Exclude.  Petitioner responded by arguing that it was not aware of supporting evidence when it requested authorization.

The Board allowed Petitioner to file its Opposition along with any supporting evidence, but instructed Petitioner that it must “explain in its opposition why the evidence is ‘appropriate.’” The Board also explained that Patent Owner still has an opportunity to argue why the evidence should not be considered in its reply to the opposition.

Biomarin Pharmaceutical Inc. v. Duke University, IPR2013-00535
Paper 78: Order on Conduct of the Proceeding
Dated: September 16, 2014
Patent: 7,056,712 B2
Before: Lora M. Green, Jacqueline Wright Bonilla, and Sheridan K. Snedden Written by: Green
Related Proceedings: IPR2013-00534; IPR2013-00537