Takeaway: The Board’s rules do not expressly prohibit the filing of supplemental evidence in response to evidentiary objections, which may lead to inconsistent panel decisions related to expungement of filed supplemental evidence.

In its Order, the Board ordered that Exhibits 2029 and 2030 and Paper 32 (Patent Owner’s Updated Exhibit List) be expunged from the record. Petitioner had requested a conference call “to discuss the handling of supplemental evidence in this proceeding.” Patent Owner had objected to Petitioner’s evidence, and in response, Petitioner served supplemental evidence. Petitioner had also objected to Patent Owner’s evidence (Paper 31), and in response, Patent Owner both served and filed supplemental evidence (Exhibits 2029 and 2030).

The Board noted that “[e]videntiary objections must be served and filed in accordance with the time periods set forth in 37 C.F.R. § 42.64(b)(1).” In response, a party may serve supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2). The Board explained that supplemental evidence is not to be filed “because the supplemental evidence may obviate an objection.” According to the Board, “[i]f the party who filed and served the objection is not satisfied that the objection has been overcome, the party may preserve the objection by filing a Motion to Exclude.” At that point, the party that served the supplemental evidence could file the evidence with its Opposition to the Motion to Exclude.

During the conference call, the parties discussed orders in other inter partes reviews in which panels authorized the filing of supplemental evidence. However, in this proceeding, the Board held that it does “not contemplate authorizing supplemental evidence to be filed when it is served.” Thus, the Board ordered that the filed supplemental evidence be expunged from the record.

Arris Group, Inc. and Cox Communications, Inc. v. C-Cation Technologies, LLC, IPR2015-00635

Paper 33: Order to Expunge

Dated: December 22, 2015

Patent: 5,563,883

Before: Barbara A. Benoit, Lynne E. Pettigrew, and Miriam L. Quinn

Written by: Pettigrew

Related Proceedings: IPR2015-01796