Takeaway: A motion to expunge a new patentability challenge raised for the first time in the petitioner’s reply is unnecessary where the patent owner can indicate its position in its sur-reply and the Board can review the pertinent materials without the aid of a motion to expunge.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to expunge. The Board further denied Patent Owner’s request for additional pages for its sur-reply.

Patent Owner had asserted “that Petitioner’s Supplemental Reply and two accompanying claim charts exceeded the scope [the Board] set forth for said filing in [its] Order of November 17, 2015.” Specifically, “Patent Owner contended that Petitioner’s inclusion of two additional claim charts . . . comparing claim 1 of U.S. Patent No. 8,220,934 B2 . . . and claim 1 of U.S. Patent Application Publication No. 2008/0225236 . . . , respectively, to U.S. Provisional Patent Application No. 60/827,657 . . . , and the corresponding discussion thereof in the Supplemental Reply, raised a new patentability challenge not included in the Petition.” Petitioner disagreed.

During a call, the Board “denied Patent Owner’s request for authorization to file a motion to expunge,” indicating “that, if Patent Owner believes Petitioner’s Supplemental Reply raises a new patentability challenge, Patent Owner can indicate that position in its Sur-Reply, which we authorized in the same November 17th Order referenced above.” The Board explained that it is “able to determine if Petitioner raised a new challenge exceeding the scope of the authorized Supplemental Reply, after reviewing all of the relevant materials and without the aid of a motion to expunge from Patent Owner.”

Patent Owner also “requested that [the Board] expand the page limit for its Sur-Reply.” The Board, however, was “not persuaded of the need to expand Patent Owner’s Sur-Reply” because “by Petitioner’s use of some of its pages on the issue of concern to Patent Owner, Petitioner correspondingly used fewer pages to address whether the ’657 provisional provides sufficient written description support for Schuck’s claims, such that Schuck should be entitled to the ’657 provisional’s filing date.”

Thus, the Board denied Patent Owner’s Request.

Masterimage 3d, Inc., et al. v. Reald Inc., IPR2015-00035
Paper 68: Decision Denying Patent Owner’s Request for Authorization to File a Motion to Expunge
Dated: December 3, 2015
Patent: 7,857,455 B2
Before: James B. Arpin and Bart A. Gerstenblith
Written by: Gerstenblith