Takeaway: A party is generally not permitted from using a demonstrative slide that discusses a specific portion of an exhibit that was not previously cited in its pleadings. 

In its Order, the Board prohibited and permitted use of certain demonstrative slides by Patent Owner at the oral hearing. The Board noted that while demonstrative slides are visual aids to a party’s oral presentation, they cannot add new evidence to the record of the proceeding and are not an opportunity for additional briefing.

The Board first reviewed demonstrative slides 8 and 58, which are a reproduction of the abstract of the ’358 Patent and a portion of a license agreement, which are both exhibits, but Petitioner argued that Patent Owner did not specifically cite to either portion. The Board noted that exhibits cannot rely on evidence that, although it is in the records, was never specifically discussed before the Board.  However, the Board would not extend this principle to prohibit demonstratives from citing to any passage of an exhibit not cited in a pleading, even if the exhibit itself is cited in the pleading.  Therefore, Patent Owner was permitted to use demonstrative slides 8 and 58.

The Board then reviewed demonstrative slides 4-6, which Petitioner objected to on the grounds that they improperly present new argument and expand upon Patent Owner’s reliance on declaration testimony in a manner not already previously presented. The Board agreed with Petitioner, finding that while the Patent Owner Response included general arguments, it did not include the specific arguments included in slides 4-6.  Therefore, these slides were excluded.

Next, the Board discussed Patent Owner’s demonstrative slides 26, 28, 29, and 33, which all reference testimony taken by Petitioner during cross examination of Patent Owner’s expert witness. Petitioner cited to CBS Interactive for the proposition that Patent Owner may not cite to cross examination testimony of its declarant in a demonstrative slide or during oral argument because that would constitute new argument.  However, the Board found that CBS Interactive does not bar Patent Owner from citing to testimony that is consistent with or provides context to arguments already made by Patent Owner or dispute characterizations made by Petitioner during cross examination or in the Petitioner Reply, as long as the cited testimony does not “expand” the arguments made in the Patent Owner Response.  The Board found that it is not clear whether any of the subject matter in these slides expands the declaration testimony of the witness, and exercised its discretion to permit their use.

Medtronic, Inc. v. Mark A. Barry, IPR2015-00780; IPR2015-00783

Paper 48: Order on Conduct of the Proceeding

Dated: May 13, 2016

Patent 7,760,358 B2; 7,776,027 B2

Before Donna M. Praiss, Brian J. McNamara, and Jeremy M. Plenzler

Written by: McNamara