Republic Tobacco, LP v. Fan Bao

In a decision highlighting the importance of closely following the procedural rules for inter partes reviews (IPR), the Patent Trial and Appeal Board (PTAB or Board) refused to exclude allegedly improper evidence, holding that the patent owner failed to preserve their objection by not filing a timely motion to exclude. Republic Tobacco, LP v. Fan Bao, Case No. IPR2015-00072 (PTAB, Jan. 4, 2016) (Chagnon, APJ).

The petitioner filed a reply to the Patent Owner's Response attaching several exhibits in support. A week later the patent owner filed a paper titled "Patent Owner's Objection to Untimely and Improper Evidence Submitted by Republic Tobacco, L.P.," claiming that the supporting exhibits were new evidence, rather than a proper rebuttal. Unsure how to classify the filing, the Board considered three possible categories: a sur−reply, a motion to strike and a motion to exclude under 37 C.F.R. § 42.64.

The Board rejected the first two categories citing the same reason—both require prior authorization from the Board. Because the patent owner did not seek authorization, the Board refused to place the filing in either category.

The Board next considered whether the filing qualified as an evidentiary objection under Rule 42.64. Under § 42.64(b)(1), if a party objects to evidence after the IPR has been instituted, the objection must be filed within five business days of service of the evidence to which the objection is directed. Under § 42.64(c) the objecting party must file a separate motion to exclude in order to preserve the objection. Here, although the Board concluded that the patent owner's filing could be considered as a timely objection, it found that the patent owner nevertheless failed to file the required motion to exclude by the deadline for motions to exclude; that fell on the same day as the patent owner filed its objections. Consequently, the Board declined to consider the patent owner's filing and allowed the evidence into the proceeding.

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