Takeaway: The Board will expunge from the record and will not consider with a Preliminary Response any new testimony that is taken specifically for the proceeding at issue.

In its Order, the Board ruled on Petitioner’s request that the Board expunge certain exhibits from the record and strike any corresponding argument in Patent Owner’s Preliminary Response. According to Petitioner, the exhibits and Preliminary Response included new testimonial evidence in violation of 37 C.F.R. 42.207(c).

The Board began by reviewing the applicable rules. Section 42.207(c) prohibits the inclusion of “new testimony evidence . . . except as authorized by the Board” in the preliminary response. In its Order, the Board explained that “[n]ew testimony is testimony that was taken specifically for the purposes of the proceeding at issue” and that “[t]he Board may permit, in its discretion, new testimonial evidence in a preliminary response if the patent owner demonstrates that such evidence is in the interest of justice.”

The Board then considered whether Exhibits 2012, 2014, 2018, 2021, and 2023-2025 were new testimonial evidence. With the exception of Exhibit 2018, the Board concluded that all of the exhibits pre-dated the filing of the petition for review and therefore were not “new testimonial evidence.”  Accordingly, the Board denied Petitioner’s request to expunge these exhibits. In contrast, the Board determined that Exhibit 2018—which was a declaration signed after the petition was filed and included a caption referencing the CBM proceeding—was “new testimonial evidence.” Thus, the Board expunged Exhibit 2018 from the record and stated that it would not consider any reference or citation to Exhibit 2018 in the Preliminary Response. Finally, the Board also reviewed numerous exhibits that were cited in Exhibit 2018. After determining that they did not contain “new testimonial evidence,” the Board decided that it would not expunge the cited exhibits but would consider them only if the exhibit itself is referenced or cited in the Preliminary Response or other permitted filing.

Square, Inc. v. Protegrity Corporation, CBM2014-00182
Paper 12: Order on Conduct of the Proceeding
Dated: January 30, 2015
Before: Kevin F. Turner and Meredith Petravick
Written by: Petravick
Related Proceedings: Protegrity Corporation v. Ingrian Networks, Inc., Case No. 3:08-cv-618 (RNC) (D.Ct.); Protegrity Corporation v. Voltage Security, Inc., Case No. 3:10-cv-755 (RNC) (D.Ct.)