Takeaway: When Petitioner objects to Patent Owner’s Response and an accompanying Declaration, Patent Owner cannot file corrected versions unless a motion to submit supplemental information is first authorized and granted.

In its Decision, the Board denied Patent Owner’s and Petitioner’s requests to expunge a declaration submitted with Patent Owner’s Response and also denied Patent Owner’s request to submit substitute a Corrected Patent Owner’s Response and Amended Declaration.

In a prior order, the Board authorized Patent Owner to file a motion in support of its request to file a Corrected Response and Exhibits. In response, Patent Owner filed a Motion for Leave to Expunge and File Corrected Patent Owner’s Response and Accompanying Exhibit, along with its Corrected Response and an Amended Exhibit 2003. Petitioner filed an Opposition to the Motion.

The Patent Owner’s Response was filed with an accompanying Declaration. Petitoner filed objections, stating that, inter alia, the Response did not include any citations to the Declaration. After Petitioner objected to the Response, Patent Owner served supplemental evidence on Petitioner pursuant to 37 C.F.R. § 42.64(b)(2). The amended declaration added further description of the expert’s relevant experience, corrected the 37 C.F.R. § 1.68 signature and the expert’s CV, and deleted information Petitioner objected to as purported hearsay.

In its Motion, Patent Owner seeks to have the original Declaration expunged and replaced with the Amended Exhibit, which elaborates on the expert’s relevant experience, as a “corrected exhibit.” Petitioner also requests that the Board expunge the original Declaration, but on the grounds that “the Response does not explain the significance of the Declaration.” Notably, Petitioner objected to the original Declaration under Federal Rule of Evidence 702 but had not moved to exclude the Declaration. In addition, Petitioner argued that the amended declaration is “improper supplemental witness testimony, filed without justification.”

The Board first considered Petitioner’s request for expungement. Noting that “[t]he Response, as filed, references the Declaration in its List of Exhibits,” and that the Declaration was filed with the Response, the Board found the “reference to the Declaration adequate to support the ‘cited’ requirement in 37 C.F.R. § 42.6(c)” and thus determined that the Declaration was “not an unauthorized or inadmissible filing” and that it would “not expunge it as such.” Next, the Board considered Patent Owner’s arguments supporting its request to expunge the Declaration and replace it with the Amended Declaration. The Board was not persuaded and stated that the original Declaration “is in the record and has been objected to by Petitioner, and should remain in the record.” With respect to the Amended Declaration, the Board determined that it is “supplemental evidence [that] should not be part of the file, nor considered on the merits, unless a motion to submit it as supplemental information is authorized and granted, or unless it is addressed successfully in a motion to exclude.” The Board then “note[d] that if Petitioner makes a motion to exclude Exhibit 2003, relevant supplemental evidence that was properly served by Patent Owner on Petitioner could be considered for purposes of that motion.” Therefore, the Board ordered the Amended Declaration expunged.

The Board then considered Patent owner’s request to expunge its original Response and file in its place the Corrected Response. The Board found that Patent Owner “failed to explain the reason it filed its Response without specific citations to the Declaration,” though Petitioner stated that Patent Owner “initially represented that the Response filed was an incorrect or earlier version of the document meant to be filed.” The Board stated that it did “not find any citation to rules or precedent, or any other reasoning in the Motion, to support Patent Owner’s requested relief of expunging the existing Response and filing a Corrected Response,” that “Patent Owner does not explain why it should be entitled to this benefit, except to say that striking the declaration would “provide an unfair advantage to Petitioners,” and that “Patent Owner has not made any case as to why, either under a good cause standard or an interests-of-justice standard, it should be allowed to effectively amend its Response at this stage in the proceeding.” Accordingly, the Board denied the Patent Owner’s request and ordered the Corrected Response, which “Patent Owner preemptively filed” expunged from the record.

Viglink, Inc. v. Linkgine, Inc., CBM2014-00184, -00185

Paper 12: Order – Conduct of the Proceeding

Dated: August 21, 2015

Patent: 7,818,214 B2 and 8,027,883 B2

Before: Kevin F. Turner, Phillip J. Kauffman, and Kristina M. Kalan

Written by: Kalan