Takeaway: The Board has discretion to allow late-filed exhibits to remain in the record where the party filing a corresponding motion to exclude would not be prejudiced by such a result and where allowing the exhibits to remain in the record would be in the interests of justice.

In its Order, the Board denied Patent Owner’s Motion to Expunge. Patent Owner had filed the Motion to expunge certain exhibits from the record because, according to Patent Owner, such exhibits were not timely filed.

It was Patent Owner’s position that because these exhibits were not earlier filed as evidence of record, Patent Owner had not had a fair opportunity to address them. Petitioner, in reply, was of the position that Patent Owner had “suffered no prejudice” and that the Board’s acceptance of the exhibits was “in the interests of justice.” Petitioner further argued that its failure to file the exhibits with its Reply was inadvertent and noted that Patent Owner had admitted that Patent Owner was in possession of the exhibits since the time when they were served on Patent Owner.

Ultimately, the Board concluded that Petitioner had not demonstrated good cause for its late filing, i.e., simply indicating that the late filing was “inadvertent” was not sufficient. Nonetheless, the Board allowed the exhibits to remain in the record because it was not persuaded by the totality of the evidence that Patent Owner would be prejudiced by this result. According to the Board, allowing the exhibits to remain in the record would be in the interests of justice. In support of its decision, the Board noted a number of factors, including the fact that “Patent Owner was on notice that Petitioner intended to rely on these Exhibits at the filing of the Reply.”

Motorola Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00500
Paper 54: Order on Conduct of the Proceeding
Dated: September 9, 2015
Patent 5,790,793
Before: Michael W. Kim, Patrick R. Scanlon, and Kristina M. Kalan
Written by: Kalan