Takeaway: A party cannot file a separate paper responding to a Statement of Facts without authorization from the Board. Such a response should be included in a Response or Reply, and will count against the page limits if it is more than a mere listing of whether the facts are admitted or denied.

In its Decision, the Board denied Petitioner’s Request for Rehearing the Board’s Order expunging a paper filed by Petitioner entitled: “Petitioner’s Response to Patent Owner’s Statement of Facts.” In a Request for Rehearing, the movant must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) “identify the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).

In Patent Owner’s Response, Patent Owner included a section entitled “Statement of Material Facts Not In Dispute” that listed fifty-four numbered “facts.” Petitioner filed, on the same day as Patent Owner’s Response, the expunged paper without authorization. Petitioner argued that the Response to Patent Owner’s Statement of Facts was authorized, because such a “listing” is a limited exclusion to the page limit of a reply. However, the Board explained that 37 C.F.R. § 42.24(c), which sets this exception for the page limit, applies to material included in the reply, and not to a separate paper filed with the reply.

Also, Petitioner failed to indicate where it argued in the Reply or in the paper that was expunged that the paper was authorized under 37 C.F.R. § 42.24(c). Thus, the Board could not have misapprehended or overlooked the argument.

Petitioner also argued that expunging the paper was an error because another panel had permitted entry of a similar paper. However, Petitioner failed to show that the decision in that other case is designated “representative,” “informative,” or “precedential;” that the facts were sufficiently similar in this case; or that such an argument had been argued in the Reply or the expunged paper.

The Board also determined that the assertions in the expunged paper were not merely a listing of whether the facts alleged by Patent Owner were admitted or denied. Instead, the expunged paper included a response to the facts allegedly asserted by Patent Owner in its Reponse.

Seoul Semiconductor Co., Ltd and North America Seoul Semiconductor Inc. v. Enplas Corporation, IPR2014-00605
Paper 30: Decision Denying Request for Rehearing
Date: March 16, 2015
Patent: 7,348,723 B2
Before: Howard B. Blankenship, James B. Arpin, and James A. Tartal
Written by: Arpin