Submission of Supplemental Evidence in an IPR May Be Submitted After the Due Date - International Business Machines Corp. v. Intellectual Ventures I LLC

by McDermott Will & Emery

Addressing the circumstances for submitting supplemental evidence in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) allowed the petitioner to submit a responsive declaration after the due date for such submissions where the declaration was relevant, the evidence could not be obtained without a subpoena and the patent owner was not prejudiced. International Business Machines Corp. v. Intellectual Ventures I LLC, IPR2014-01385 (PTAB, May 4, 2015) (Parvis, APJ.).

The petitioner, IBM, filed an IPR against a patent belonging to Intellectual Ventures I (the patent owner). The prior art included a reference called “Oracle 8i Application Developer’s Guide—XML,” which listed a date of “September 2000” on the first page. The petitioner alleged that this Oracle Developer’s Guide was a printed publication dated September 2000. The patent owner countered that the Oracle Developer’s Guide had not been shown to be a printed publication or authenticated and was inadmissible hearsay.

To respond to the patent owner’s allegations, IBM was authorized to subpoena the Oracle Corporation regarding its Oracle Developer’s Guide. In response, Oracle provided a declaration (the “Oracle Declaration”) to IBM before the Board’s due date for filing supplemental evidence. IBM requested permission to file the Oracle Declaration as supplemental evidence after the due date. The patent owner opposed this request, claiming that it was prejudiced by being served supplemental evidence after the due date and that it lacked sufficient time to formulate a strategy for responding.

Unpersuaded by the patent owner’s position, the Board found that the information in the Oracle Declaration was relevant and could not be obtained without the subpoena. According to the Board, allowing the petitioner to submit the Oracle Declaration is in the interest of justice because the Oracle Declaration responds to an objection by the patent owner regarding public availability of the Oracle Developer’s Guide and thus its status as prior art. The Board also concluded that the patent owner was not prejudiced because IBM had previously agreed to an extension of the deadline for the patent owner’s response and, if the patent owner still believed that the Oracle Developer’s Guide was inadmissible, the patent owner could file a motion to exclude.

Following the Board’s decision, the patent owner requested authorization to cross-examine Mr. Reader, the Oracle employee responsible for preparing the Oracle Declaration. The Board granted the patent owner’s request, subject to Oracle’s agreement, but limited the scope of cross-examination to only the subject matter of Mr. Reader’s narrow direct testimony. The Board also requested that the patent owner place as little burden on Oracle Corporation as possible, suggesting that the cross-examination be limited to one hour and be done by telephone or in writing. As the Board explained, any request for cross-examination by the patent owner that is not narrowly tailored will be denied because the patent owner had not provided any persuasive evidence or reasoning to doubt the “September 2000” date on the Oracle Developer’s Guide, and the Board was not going to authorize “an unnecessary fishing expedition.”

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McDermott Will & Emery

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