Takeaway: A patent owner response that is filed within ten days of institution and that argues the admissibility of evidence in the petition could be construed as objections to the evidence, in response to which the petitioner may serve supplemental evidence.

In its Order, the Board authorized Petitioner to serve supplemental evidence under 37 C.F.R. § 42.64(b)(2) and dismissed its request to file supplemental evidence under 37 C.F.R. § 123(a).

As summarized in an email to the Board, Patent Owner requested a conference call to discuss Petitioner’s service of three new declarations of fact witnesses “primarily (but not exclusively) address[ing] the authenticity of the Merlin documents.” According to Petitioner’s transmittal email, the declarations were served under 37 C.F.R §42.64(b)(2) as supplemental evidence in response to evidentiary objections.

Patent Owner contended that it had not objected to Petitioner’s evidence, but instead filed a Response that Petitioner construed as containing evidentiary objections. Thus, Patent Owner argued that “no supplemental evidence should be permitted to be served or considered.” In response, Petitioner explained that Patent Owner’s Response (Paper 51) filed within ten days of institution in IPR2014-00411 argued that the Merlin referenced lacked authentication. Thus, according to Petitioner, it could reply to such evidentiary objections by serving supplemental evidence. Petitioner also requested authorization to file a motion to file supplemental information under 37 C.F.R. § 123(a).

The Board analyzed the Patent Owner Response, which was filed within the ten day window after institution for evidentiary objections. In the Response, Patent Owner argued that Petitioner failed to establish authenticity of the Merlin references and further stated that it intended to file a motion to exclude the Merlin references. As the Board noted, according to 37 C.F.R. § 42.64(c), motions to exclude “must be filed to preserve any objection” and “must identify the objections in the record.” The Board concluded that “the present record can reasonably be taken to demonstrate that Patent Owner has raised an objection to the evidence in the Petition.” Accordingly, Petitioner was allowed to serve supplemental evidence in response to the objection, and Petitioner’s request to file supplemental information was dismissed.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2015-00065
Paper 27: Post Conference Call Order, Conduct of Proceedings
Dated: March 25, 2015
Patent: 8,426,813 B2
Before: James T. Moore, McKelvey
Written by: Moore
Related Proceedings: IPR2014-00411; IPR2014-00434