Takeaway: Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R.§ 42.23(b) is an issue for the Board to determine.

In its Order, the Board authorized Patent Owner to file an exhibit containing the transcript of the Markman hearing that took place in a related litigation. However, the Board did not authorize Patent Owner to file any evidence other than this transcript. Petitioner was authorized to submit any objections that it had to Patent Owner’s filing.

Patent Owner had taken issue with Petitioner’s Reply and the exhibits that Petitioner had filed along with the Reply. Patent Owner’s positions were: (1) that the submitted papers had exceeded the scope of a proper Reply under 37 C.F.R. § 42.23(b); (2) that Petitioner’s filing was not complete under Federal Rule of Evidence (FRE) 106 because it only included claim construction briefing but not the transcript of the Markman hearing or the claim construction order issued by the court; and (3) that Patent Owner should be authorized to submit additional evidence “to provide appropriate context to certain of the evidence filed by Petitioner with its Reply” (i.e., “a book chapter authored by Patent Owner’s expert, as well as certain publications cited therein”).

As for position (1), the Board noted Patent Owner’s assertion that Petitioner’s Reply had referenced multiple articles not previously made of record, to which Patent Owner would not have sufficient opportunity to respond, as well as Petitioner’s assertion that its Reply constituted a proper rebuttal to Patent Owner’s Response. The Board, in reply, stated that “whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to the determination of the Board.” The Board went on to say that it would “determine whether the Petitioner’s Reply and evidence are outside the scope of a proper reply and rebuttal evidence when [it reviewed] the parties’ briefs and [prepared] the final written decision.” The Board said that it may exclude the Reply and related evidence if they contained improper arguments or evidence.

Regarding position (2), the Board authorized Patent Owner to file the transcript of the Markman hearing. The Board also authorized Patent Owner to refer to this evidence at the time of oral argument.

With respect to position (3), Petitioner had asserted that FRE 106 “only [applies] to submission of other portions of the book.” The Board “declined to authorize Patent Owner’s request to submit this additional evidence at this late stage of the proceeding.” 

Musculoskeletal Transplant Foundation v. MiMedx Group, Inc., IPR2015-00664 Paper 35: Order on Conduct of the Proceeding
Dated: March 9, 2016
Patent: 8,372,437 B2
Before: Lora M. Green, Susan L. C. Mitchell, and Christopher G. Paulraj
Written by: Green
Related Proceedings: District Court litigation involving the ‘437 patent