T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC

Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) issued an order on the conduct of the proceeding, clarifying its rule relating to incorporation by reference. T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC, Case Nos. IPR2015-00015; -00017 and -00018 (PTAB, Nov. 3, 2014) (Chang, APJ).

In each of its petitions for inter partes review (IPR), the petitioner filed two separate expert declarations as exhibits—one created by the petitioner’s own expert and one filed by another petitioner in a different matter. The petitioner cited to both expert declarations for support in its petitions. At issue, the declaration of the petitioner’s expert witness incorporated by reference “a large portion” of the declaration of the expert witness from the separate matter.

37 CF.R. § 42.6(a)(3) states that “[a]rguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.” The petitioner argued that the rule did not apply to the declaration of its expert witness, because the rule was directed only to incorporating arguments by reference, and the declaration itself contained testimonial evidence, not arguments. The PTAB closed down the argument, noting that the petitioner’s rationale focused on “only the first word of the first sentence of the rule, and failed to consider the rule as a whole.” Instead, the PTAB determined that the petitioner had essentially combined the two expert declarations that it filed, which is impermissible under 37 CF.R. § 42.6(a)(3).

After receiving the clarification, the petitioner requested leave to file a corrected expert declaration. The patent owner opposed the request, arguing that the petitioner was obligated to conduct its own legal research earlier in the matter and therefore should have made the necessary corrections before filing petitions. Further, the patent owner took the position that granting the petitioner’s request to correct the declaration would prejudice the patent owner because such a correction would be substantive.

The PTAB did not find the patent owner’s objections to be persuasive. As an initial matter, the PTAB noted that the petitioner had filed both declarations with its petitions and had clearly cited to the declarations for support. Additionally, each petition provided “direct citations to the Declaration of [the expert] and to the prior art references.”

Given the early state of the proceedings, the PTAB did not find that correcting the expert declaration would prejudice the patent owner, provided that any corrections did not introduce substantive changes to the declaration. To the contrary, the PTAB determined that “the corrected Declaration, most likely, would clarify the record and simplify discovery."