Timing is Everything at the PTAB

The whole PTAB trial timeline is extremely compressed, but one deadline in particular stands out for its urgency: the Patent Owner’s objections to Petition evidence.  The Patent Owner has only 10 business days from institution to file objections to Petition evidence.  37 § 42.64(b)(1).  That includes anything from the preliminary stage of the proceeding, and it is the Patent Owner’s only opportunity to preserve its right to seek exclusion of the evidence in question.

Factual Inc. v. Locata LBS LLC (IPR2015-00224, Paper 21, Nov. 18, 2015) illustrates the consequence of failure to meet this deadline: waiver of the objection.  In Factual, the Patent Owner filed with its Patent Owner Response objections to a Petition declaration, almost three months late.  The Petitioner moved to strike the Patent Owner’s objection, and the PTAB granted the motion.  The PTAB pointed out that the 10-day rule is immutable without first seeking the Board’s approval.

The Patent Owner must, as a result, scour the preliminary stage evidence to identify anything objectionable, and they probably should do it while waiting for a decision on institution.  Once the case is instituted, many other rapid deadlines start to kick in and demand the Patent Owner’s attention.

Parties also should be wary of relying on stipulated extensions to objection deadlines.  See, e.g., Gnosis S.P.A. v. S. Alabama Med. Sci. Found., IPR2013-00116 (Paper 23, Sep. 4, 2013) (denying authorization to stipulate to objection deadline extensions absent a showing of good cause).

Of course, one might argue that fencing over evidentiary objections is mostly pointless, given that very few motions to exclude are granted.  But every once in a while they are, e.g., Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2014-01146 (Paper 36 at 6–7, Dec. 10, 2015), so it should be kept in mind.

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