Takeaway: Objections to a declaration submitted with a petition should be served within ten business days of the decision instituting trial.

In its Order, the Board granted Petitioner’s opposed motion to strike Patent Owner’s objections to Petitioner’s evidence. Patent Owner had objected to Petitioner’s declaration submitted with the Petition where the witness allegedly “admitted during his deposition that the opinions he presents in the [declaration] are not based on sufficient facts or data, are not the product of reliable principles and method, and are not reliably applied to the facts of this proceeding.”

Petitioner argued that Patent Owner’s objections were untimely under 37 C.F.R. § 42.64(b)(1), “which requires that any objection to evidence submitted during a preliminary proceeding (such as the Braasch Declaration) must be served within ten business days of the institution of the trial.” Patent Owner responded “that its objections did not arise until Dr. Braasch’s deposition, and that ‘Section 42.64(b)(1) can only be met if the bases for objection are facially apparent in the evidence.’”

The Board agreed with Petitioner:

In this case, the Braasch Declaration was submitted with the Petition. Any objections to the Braasch Declaration, therefore, must have been served within ten business days of the decision instituting trial. 37 C.F.R. § 42.64(b)(1). Trial was instituted on May 14, 2015; as a consequence, Patent Owner’s objections were almost three months late, and Patent Owner did not request that the Board waive or suspend the timing requirement prior to serving the late objections. Further, the alleged deficiencies in the Braasch Declaration should be addressed within the context of the weight given the testimony in view of Patent Owner’s cross-examination of Dr. Braasch, as Patent Owner argues in the Patent Owner Response.

Thus, Petitioner’s motion to strike Patent Owner’s objections to Petitioner’s evidence was granted.

Factual Inc. v. Locata LBS LLC, IPR2015-00224

Paper 21: Order on Petitioner’s Motion to Strike Patent Owner’s Objections to Petitioner’s Evidence

Dated: November 18, 2015

Patent: 6,259,381 B1

Before: Rama G. Elluru, Jo-Anne M. Kokoski, and Robert J. Weinschenk

Written by: Kokoski