Takeaway: If a patent owner is granted authorization to file a surreply on a particular issue after cross-examination of a reply witness, the patent owner cannot also file observations on the cross-examination of the reply witness directed to the same issue.

In its Order, the Board granted Petitioner’s request for Patent Owner’s Motion for Observation to be expunged. The Board noted that “the purpose of a motion for observation is to provide a party a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply by the party.” In this case, the Board granted Patent Owner’s “request for authorization to file a surreply with respect to the issue of antedating the asserted prior art reference patents involved in the grounds of unpatentability on which trial has been instituted.” The surreply could be filed with sufficient time after cross-examining Petitioner’s Reply witness. Accordingly, the surreply, which was Patent Owner’s last substantive paper, was filed after the cross-examination. Accordingly, it was improper to file observations on the cross-examination directed to the issue discussed in the surreply, when the surreply was filed after the cross-examination. The Board noted that Patent Owner could have filed observations on the cross-examination directed to issues other than what was authorized to be discussed in the surreply, but that was not the case in this proceeding.

The Board also noted that an observation “is not an opportunity to raise new issue, re-argue issues, or pursue objections,” and the Board may refuse entry of excessively long or argumentative observations. The Board agreed with Petitioner that some of the observations submitted by Patent Owner impermissibly included arguments and citations to case law. Accordingly, the Board expunged Patent Owner’s Motion for Observation and related papers, such as Petitioner’s Response to Patent Owner’s Motion for Observation.

LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-00325

Paper 52: Order on Conduct of the Proceeding

Dated: January 25, 2016

Patent: 7,742,053 B2

Before: Joni Y. Chang, Brian J. McNamara, and Rama G. Elluru

Written by: Chang