Takeaway: A party may not circumvent the requirements for submitting supplemental information by submitting the information in the form of an exhibit to a motion to exclude.

In its Order, the Board expunged a declaration that was submitted with Patent Owner’s Motion to Exclude. Petitioner sought authorization from the Board to file a motion to expunge Exhibit 2089, a declaration by Dr. Robert Short in support of Patent Owner’s Motion to Exclude. Rather than authorizing Petitioner’s request, the Board entered the instant Order expunging Exhibit 2089.

Petitioner in its Reply and accompanying expert declaration discussed U.S. Patent No. 8,018,831, of which Dr. Short was a co-inventor. The declaration of Dr. Shaw, which was submitted with Patent Owner’s Motion to Exclude, provided “a detailed technical discussion of the patent and specifically addresse[d] and provide[d] a rebuttal to Petitioner’s position.” Patent Owner’s argument in the Motion to Exclude was that the declaration “demonstrates that the patent is not relevant because it does not disclose what Petitioner and its expert claim it discloses.” Patent Owner also contended that because the patent was not discussed at Dr. Short’s deposition, “it is ‘improper impeachment evidence.’”

The Board was not persuaded by Patent Owner’s arguments. Instead, the Board found that the Dr. Short Declaration was “an unauthorized attempt to submit supplemental information and should be expunged.” The Board explained that supplemental information may be submitted in limited circumstances, and considering the late stage in the proceeding, “a strong showing of need would be required” to satisfy the interest of justice standard. “Patent Owner has avoided making this showing by submitting what amounts to surreply testimony on the merits as part of a motion to exclude.”

The Board also did not find the declaration helpful in deciding Patent Owner’s Motion to Exclude. Expert testimony is not required to determine relevance of a patent and the Board could determine the scope of cross-examination from the deposition transcript.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00552
Paper 65: Order on Conduct of the Proceedings
Dated: August 13, 2015
Patent: 6,754,195 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Giannetti