Despite having the authority to sanction parties for misconduct (see 37 C.F.R. § 42.12), until the Board’s decision in SAP America et al. v. Lakshmi Arunachalam IPR2014-00413, Paper 23 (Dec. 5, 2014); IPR2014-00414, Paper 21 (Dec. 5, 2014), the Board erred on the side of providing guidance and giving warnings rather than imposing sanctions.
In Medtronic Inc. et al. v. Troy R. Norred, M.D., for example, the Board agreed that speaking objections and witness coaching were improper, and advised that violating the deposition standards may warrant “exclusion of the primary declaration testimony from the witness being deposed,” but denied sanctions. IPR2014-00110, Paper 23 (Oct. 8, 2014). Id. In Samsung Electronics et al. v. Black Hills Media LLC., the Board only warned counsel that submitting unauthorized emails substantively discussing issues is prohibited by the rules and could result in sanctions. IPR2014-00717, Paper 6 at 2 (July 10, 2014).
In the recent SAP decision, however, the Board sua sponte imposed sanctions on the Patent Owner who appeared pro se. IPR2014-00414, Paper 21 at 2. The Patent Owner filed an unauthorized motion containing sensitive information and “unsubstantiated allegations concerning Judge McNamara.” SAP at 2. While considering what action to take with the unauthorized motion, the Board designated the motion accessible to the Board and parties only. The Patent Owner, however, publically posted the unauthorized motion on a website in what the Board characterized as an attempt to intimidate Judge McNamara. SAP at 2. The Patent Owner then filed another unauthorized paper alleging bias, seeking Judge McNamara’s recusal, and the reversal of all previous adverse rulings. See SAP at 3. These were the third and fourth unauthorized papers filed by the Patent Owner in an IPR proceeding, and she had already been warned of the possibility of sanctions. SAP at 4-5. Because of her refusal to conform to the rules despite repeated admonitions to abstain from filing unauthorized motions, the Board imposed sanctions. The sanctions included terminating access to the Patent Review Processing System for uploading documents for “all past, present or future proceedings,” and requiring Board authorization prior to filing “any paper in any proceeding.” SAP at 4-5. Violation of the sanctions would result in adverse judgment. SAP at 6.
While the conduct here rose to an egregious level, the Board still gave warnings prior to issuing sanctions. Nevertheless, the decision is a reminder of the importance of following PTAB rules and Board orders, and sheds light on at least one way the Board may impose sanctions. Particular care should be taken when engaging in practices that are more freely allowed in litigation, such as filing routine motions, which may be procedurally defective in PTAB proceedings and may lead to sanctions.