Takeaway: The Board may impose sanctions if a party fails to comply with the rules, an order from the panel, or causes unnecessary delays or costs.

In its Order in two related proceedings, the Board sua sponte sanctioned Patent Owner by ordering that (1) all of Patent Owner’s motions to exclude be expunged and (2) Patent Owner may not file a motion to exclude in either proceeding regarding any evidence already of record in either proceeding.

The Board began with a discussion of issues relating to a motion to exclude filed by Patent Owner. In particular, Patent Owner filed a motion to exclude evidence in each proceeding. Each of the papers was missing a page. Patent Owner then filed a second version the same day, without authorization and with the pages upside down. Patent Owner then emailed the Board’s staff and requested expungement of the “incorrect, earlier sent files” without conferring with opposing counsel. The Board directed counsel for Patent Owner to identify, by paper number, which motion it sought to have expunged and to confer with opposing counsel and advise the Board whether there was an objection. Counsel for Patent Owner then sent the Board another email, requesting that the first version be expunged, with a copy to counsel for Petitioner. The Board concluded that counsel for Patent Owner “appear[ed] to not have conferred with opposing counsel prior to sending another email.”

The Board next discussed previous occasions on which “Patent Owner . . . inconvenienced the panel, Board staff, and/or opposing counsel in these proceedings,” including by missing scheduled conference calls, filing papers with typographical errors that it then sought to correct, and filing papers that do not comply with formatting requirements. The Board then noted that it had “previously warned Patent Owner to not waste the time of the Board or opposing counsel and that further misconduct may result in sanctions” and that it has the authority “to impose a sanction against a party for misconduct, such as the failure to comply with an applicable rule or order and for actions that cause unnecessary delay or cost.”

The Board concluded by ordering that (1) all of Patent Owner’s motions to exclude be expunged and (2) Patent Owner may not file a motion to exclude in either proceeding regarding any evidence already of record in either proceeding.

Euro-Pro Operating LLC v. Acorne Enterprises, LLC, IPR2014-00351, IPR2014-00352
Paper 37: Order on Sanctions
Dated: February 13, 2015
Before: Michael J. Fitzpatrick, Hyun J. Jung, and Scott A. Daniels
Written by: Fitzpatrick