Takeaway: The filing of an appropriate notice concerning a related proceeding requires prior Board authorization and is not a briefing opportunity to advocate a desired conclusion in the matters pending before the Board.

In its Order, the Board expunged the parties’ Supplemental Mandatory Notices as constituting unauthorized papers. The Board further scheduled a joint conference call “to discuss the matter of mandatory notices as they pertain to a related proceeding.”

Patent Owner had filed two papers titled “Patent Owner’s Supplemental Mandatory Notice Pursuant to 37 C.F.R. § 42.8.” Filed with the first was a “copy” of a public version of a “Notice Regarding Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bonding” issued by an administrative judge in a related ITC proceeding. And filed with the second was a “full copy” of the Initial Determination. In response, Petitioner filed its own “Petitioner’s Supplemental Mandatory Notice Pursuant to 37 C.F.R. § 42.8 . . . identifying and discussing the Initial Determination.”

The Board found that Patent Owner “misused the filing of a Mandatory Notice under 37 C.F.R. § 42.8(b)(2) with regard to related matters by specifically highlighting and discussing the substantive contents of Judge Essex’s Initial Determination,” which triggered “Petitioner to engage in the same.” The Board explained:

An appropriate notice simply would have noted that Judge Essex had issued an Initial Determination in the related proceeding involving U.S. Patent No. 8,220,934. Patent Owner should not have turned the Mandatory Notice into a briefing opportunity to advocate the conclusion it urges in the matters pending before the Board. And the Notice of, and copy of, the Initial Determination should not have been filed without prior Board authorization.

Thus, the Board expunged the Supplemental Mandatory Notices.