Takeaway: A petitioner may be allowed to file a corrected declaration to address improper incorporation by reference in an original declaration where the petition already properly cites to both the declaration and the material incorporated by reference, and the patent owner would not be prejudiced by the correction.

In its Order, the Board granted Petitioner’s request to file a corrected declaration to expressly include materials that were previously incorporated by reference and to file a corrected Petition to change the citations accordingly.

The Petitions in the instant proceedings were filed with two exhibits: (1) Dr. Aazhang’s Declaration and (2) a copy of Dr. Kakaes’s Declaration that was filed by Apple Inc. in another inter partes review, IPR2014-01032.  Each Petition cited to both declarations.  However, Dr. Aazhang’s Declaration incorporated by reference “a large portion” of Dr. Kakaes’s Declaration.

Petitioner requested the conference call to seek clarification regarding incorporation by reference under 37 C.F.R. § 42.6(a)(3). Petitioner argued during the call that Dr. Aazhang’s incorporation by reference was not improper because “the rule only prohibits incorporatingarguments by reference, and Dr. Aazhang’s Declaration contains testimonial evidence and not arguments.”  The Board disagreed with Petitioner’s narrow interpretation of the rule, and found that Petitioner’s combination of the two Declarations was not permitted.

Petitioner also requested leave to file a corrected declaration to expressly include the material incorporated by reference, which Patent Owner opposed. Patent Owner argued that Petitioner should have researched the issue earlier and made any necessary corrections before filing the Petitions, and that the requested correction would be prejudicial because the change is substantive.  First, the Board was not persuaded that the change would be substantive because each Petition already included citations to both declarations as well as the prior art references.  The Board also found that the corrected Declaration would not be prejudicial at the early stage of the proceedings.  The Patent Owner Preliminary Responses are not due until January 15, 2015 at the earliest, with the other Responses due on January 20, 2015.  The Board could not discern and Patent Owner did not identify any reason “why correcting the format of Dr. Aazhang’s Declaration would impact [Patent Owner’s] ability to timely file its Patent Owner Preliminary Responses.”  Instead, the Board indicated that the correction would clarify the record and granted Petitioner’s request.

T-Mobile USA, Inc. and T-Mobile US, Inc. v. Mobile Telecommunications Technologies, LLC, IPR2015-00015, IPR2015-00017, IPR2015-00018
Paper 7: Order on Conduct of the Proceedings
Dated: November 3, 2014
Patents: 5,915,210; 5,590,403; 5,659,891
Before: Joni Y. Chang, Scott A. Daniels, and Jason J. Chung
Written by: Chang
Related Proceeding: IPR2014-01032