Takeaway: Evidence to overcome evidentiary objections is considered supplemental evidence that should be served, not filed.

In its Order, the Board denied Petitioner’s request for authorization to file a Motion for Supplemental Information under 37 C.F.R. § 42.123(a)(1). Petitioner sought to file declarations offered in response to Patent Owner’s hearsay and authentication objections to various exhibits. In denying authorization, the Board explained that because the declarations were being offered strictly in response to Patent Owner’s objections, they were considered supplemental evidence under 37 C.F.R. § 42.64(b)(2) and not supplemental information. Supplemental evidence is to be served, not filed.

The Board also provided some guidance regarding motions to exclude should Patent Owner seek to file such a motion. The Board instructed Patent Owner to attach, as exhibits to the motion, any objections that were timely served under 37 C.F.R. § 42.64(b)(1). Petitioner, in its response, should address those objections and may attach as exhibits the supplemental evidence that was timely served under 37 C.F.R. § 42.64(b)(2).  Motions to exclude should focus on evidentiary issues, such as the publication date of a reference, rather than substantive matters or the weight of the evidence.

QSC Audio Products, Inc. v. Crest Audio, Inc., IPR2014-00127; IPR2014-00129 Paper 17: Order on Conduct of the Proceedings
Dated: June 12, 2014
Patents: 6,023,153; 5,652,542
Before: Glenn J. Perry, Bryan F. Moore, and Miriam L. Quinn
Written by: Quinn