Takeaway: If a party files any request that is not explicitly allowed for by the rules, that party must state whether it conferred with the opposing party and whether the opposing party opposes the request.

In its Order, the Board denied Patent Owner’s Request to File Corrected Exhibit. Patent Owner inadvertently omitted an attachment to its declaration. Although Patent Owner stated that a copy of the missing exhibit was provided to Petitioner immediately upon discovery of the omission, Patent Owner failed to indicate whether it conferred with Petitioner or whether Petitioner intends to oppose the filing of the corrected exhibit. Therefore, the Board denied Patent Owner’s Request, but granted leave to re-file after conferring with Petitioner.

Eastman Kodak Company, AGFA Corporation, Esko Software BVBA, and Heidleberg, USA v. CPT Innovations, LLC, IPR2014-00788
Paper 21: Denial of Request to File Corrected Exhibit With Leave to Re-File Request
Dated: April 7, 2015
Patent 6,738,155 B1
Written by: Brian J. McNamara