Takeaway: If prior art status of a reference is contested in prior proceedings, a petitioner should address any such deficiencies in the first instance, and not rely on being granted permission to file supplemental evidence.

In its Decision, the Board denied Petitioner’s request for an extension of time to file supplemental evidence and request to file a motion to submit supplemental information, and granted Patent Owner’s request to file a motion to stay related reexamination.

Based on Patent Owner’s previously-filed objection to a transcript of a deposition taken in connection with related district court litigation, Petitioner sought an extension of time to file supplemental evidence given that the Rule “requires that supplemental evidence must be served within ten business days of service of the objection” and “Petitioner stated that it ‘recently’ made attempts but was unable to contact Atsushi Kawashima, who is most probably in Japan.”

Patent Owner opposed, arguing that Petitioner is “attempting to cure, improperly, deficiencies in its prima facie case through supplemental evidence.” The judges were “not persuaded by Petitioner that deviating from 37 C.F.R. § 42.64(b)(2) by extending the time for filing supplemental evidence is appropriate under these circumstances” because the prior art status and reliability of the testimony was contested in previous patent office proceedings. “Petitioner, thus, should have been aware prior to filing of the Petition in this proceeding that it may need to locate Atsushi Kawashima if it relied upon the testimony in Exhibit 1007 to establish that Exhibit 1003 is prior art.”

Petitioner “alternatively requested authorization to file a motion to submit supplemental information should it contact Atsushi Kawashima.” However, “Petitioner’s request is premature as Petitioner indicates that it has been unable to contact Atsushi Kawashima and, thus, is not in possession of such supplemental information.” Thus, “[s]hould Petitioner possess such supplemental information, Petitioner may contact the Board to renew its request at that time.”

Patent Owner requested authorization to file a motion to stay related reexamination proceedings, which Petitioner did not oppose. As such, Patent Owner was granted authorization to file such a motion to stay.

IBG LLC, et al. v. Trading Techs. Int’l, Inc., CBM2015-00179
Paper 31: Decision on Conduct of the Proceeding
Dated: March 24, 2016
Patent: 7,533,056 B2
Before: Meredith C. Petravick and Jeremy M. Plenzler
Written by: Petravick
Related Proceedings: Trading Techs. Int’l, Inc. v. eSpeed, Inc., Case No. 04-5312 (N.D. Ill.); CBM2014-00131; Reexamination Control No. 90/013,578.