Takeaway: Demonstratives can only include arguments and evidence already presented to the Board and included in the parties’ papers (petition, patent owner response, reply, etc.).

In its Order, the Board precluded Patent Owner from presenting certain demonstratives at oral argument. Petitioner objected to the slides stating, “the slides depict and cite to paragraphs of [Patent Owner’s] expert declaration (Ex. 2005) that [Patent Owner] did not cite in its Patent Owner Response or any other paper.” Patent Owner acknowledged there is no pin cite to any paragraphs of its expert declaration, but contended that the paragraphs referenced are conclusions which are argued in the Response.

Petitioner cited to CBS Interactive v. Helfrich Patent Licensing, LLC, IPR2013-00033, Paper 118 (Oct. 23, 2013) to argue that lack of prior citation to the referenced paragraphs precludes their use as demonstratives. CBS stated that nothing new can be presented at oral argument, and explained that the burden of showing that a slide does not contain new argument or evidence is on the side presenting the slide.

The Board concluded that to the extent these slides reference paragraphs of the declaration that are not included in the Response, Patent Owner is precluded from using them. The Board allowed Patent Owner to revise the slides to repeat similar arguments made in the Response, and ordered the parties to meet and confer if there are further objections to the revised slides.

International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2015-00089; IPR2015-00092
Paper 41: Order on Conduct of the Proceeding
Dated: January 14, 2016
Patent 6,546,002 B2
Before: Gregg L. Anderson, Jon B. Tornquist, and Robert J. Weinschenk
Written by: Anderson