Takeaway: Objections to evidence should be served and filed, but supplemental evidence should only be served, and not filed, before a motion to exclude.

In its Decision, the Board authorized Petitioner to file previously served evidentiary objections and ordered expungement of supplemental evidence filed by Patent Owner.

After Patent Owner filed its Patent Owner Response, Petitioner served—but did not file—objections to evidence submitted with the Response. Patent Owner then served and filed exhibits as supplemental evidence in response to Petitioner’s objections. During a conference call with the Board, Petitioner argued that Patent Owner’s supplemental evidence should have been served only, not filed, and thus should be expunged from the record of these proceedings, and Patent Owner argued that Petitioner’s objections should have been filed, but were not, and thus were not timely.

Under 37 C.F.R. § 42.64(b)(1), once a trial has been instituted, any objection to evidence must be filed within five business days of service of the evidence to which the objection is directed. The Board authorized Petitioner to file the previously served objections; however, if Petitioner files a motion to exclude based on any of those objections, Patent Owner “reserves the right to argue that those objections were not filed timely.”

Under 37 C.F.R. § 42.64(b)(2), a party may respond to an objection to evidence by serving supplemental evidence within ten business days of service of the objection. The Board therefore determined that “Patent Owner prematurely filed supplemental evidence before a motion to exclude, and thus the exhibits filed as supplemental evidence will be expunged from the record of these proceedings.”

Symantec Corp. v. The Trustees of Columbia University in the City of New York, IPR2015-00372, -374, -378
Paper 29: Order to Expunge – Conduct of the Proceeding
Dated: September 29, 2015
Patent: 7,448,084 B1;  7,913,306 B2; 7,448,084 B1
Before: Howard B. Blankenship, Bryan F. Moore, and Robert J. Weinschenk Written by: Weinschenk