Takeaway: The Board prefers a “list approach” in lieu of granting a Motion to Strike material that allegedly exceeds the scope of Patent Owner’s Response because if the Board incorrectly determines that portions of Petitioner’s Reply are beyond the scope of Patent Owner’s Response, those portions would remain in the record for consideration on appeal.

In its Order, the Board authorized Patent Owner to file a list of items that it believes exceeded the scope of Patent Owner’s Response. Petitioner was authorized to submit a response thereto.

Patent Owner asserted during a conference call that portions of Petitioner’s Reply are beyond the scope of Patent Owner’s Response and improperly incorporate attorney arguments found in the Holberg Declarations. Patent Owner requested permission to file a motion to strike pages 1-4 of Petitioner’s Reply and portions of the Holberg Declarations.

The Board asked Patent Owner if such a filing would adequately serve Patent Owner’s interests. Patent Owner stated that Petitioner may argue the identified portions on appeal if they remain in the record.

The Board stated that in similar situations, the Board has permitted the Patent Owner to file a paper identifying those portions of the Petitioner’s reply that are allegedly beyond the scope of Patent Owner’s response, which the Board call “the list approach.” The “primary distinction between a Motion to Strike approach and the list approach is that with the motion there is a potential to strike some portions of the record, while in the latter approach even portions that are not considered remain in the record.” After reviewing the cases cited by Patent Owner and Petitioner, the Board stated that it prefers the list approach because if the Board incorrectly determines that portions of Petitioner’s Reply are beyond the scope of Patent Owner’s Response, those portions would remain in the record for consideration on appeal.

Thus, the Board authorized Patent Owner to submit a paper in the form of a list providing the location and a concise description of any portion of the Petitioner’s Reply that Patent Owner wishes to draw to the Board’s attention with regard to exceeding scope or improper incorporation. The Board also authorized Petitioner to submit a response to Petitioner’s list.

SILICON LABORATORIES, INC. v. CRESTA TECHNOLOGY CORPORATION, IPR2015-00615, 00626
Paper 17: Decision Denying Authorization for Motion to Strike
Dated: February 29, 2016
Patent 7,075,585 and 7,265,792
Before: Phillip J. Kauffman, Gregg I. Anderson, and Patrick M. Boucher
Written by: Kauffman