In B/E Aerospace, Inc. v MAG Aerospace Industries, LLC, the PTAB decided that testimonial evidence submitted in the Patent Owner’s Preliminary Response, which was created for related litigation, was “new” testimonial evidence under 37 C.F.R. § 42.107(c). IPR2014-01510, Paper 13 (Jan. 20, 2015). Thus, the Board ordered that the testimony and any associated arguments in the Preliminary Response not be considered in determining whether to institute the IPR.
37 C.F.R. § 42.107(a) permits a Patent Owner faced with an IPR petition to file a Preliminary Response setting forth reasons why no IPR should be instituted. However, 37 C.F.R. § 42.107(c) states that the Preliminary Response “shall not present new testimonial evidence beyond that already of record, except as authorized by the Board.”
The Board has held in the past that testimonial evidence “that was filed in the United States District Court . . . is not ‘new’ testimonial evidence relied upon by the Patent Owner to support the contentions in the preliminary response, and thus can be appropriately submitted with the response.” IPR2013-00114, Paper 11 (Jun. 25, 2013). Of note, the foregoing testimony evidence determined not to have been “new” was dated nearly six months after the filing of the IPR petition at issue.
In B/E Aerospace, the Board acknowledged the prior precedent but distinguished it on the fact that the testimonial evidence in question “is expert witness testimony on patentability prepared after filing of the Petition, and therefore is new testimony evidence that may not be presented in a patent owner’s preliminary response.” (Emphasis added).
The decision in B/E Aerospace is not without precedent, however. For example, where declaration testimony substantively addressing patentability was prepared and filed in the district court after the IPR petition was filed, the Board has held that the testimonial evidence was “not preexisting declaration testimony” and thus “not entitled to consideration at this stage of the proceeding.” IPR2014-00434 (Sep. 5, 2014) (emphasis in original).
Similarly, where a Patent Owner was requesting authorization to file testimonial evidence comprising a transcript of a deposition from another IPR, in which patentability was substantively discussed, the Board noted that the date of the deposition was after the IPR petition date and decided that the deposition transcript “corresponds to new testimony prohibited at this stage of the proceeding, as it was filed in a different IPR proceeding after Petitioner filed its Petition in this case.” IPR2014-01365, Pape 11 (Nov. 14, 2014).
Some takeaways from this decision, and the line of decisions cited, are:
- Although testimonial evidence that substantively addresses patentability and is dated after the IPR petition may be “new” and therefore unavailable for use in a Preliminary Response, such testimonial evidence that is preexisting at the time the IPR petition is filed may still be included in a Preliminary Response and considered in deciding whether to institute; and
- The penalty for including in a Preliminary Response “new” testimonial evidence that is prohibited under 37 C.F.R.§ 42.107(c) has been for the Board to simply ignore that evidence and the associated arguments, thus suggesting it is better to err on the side of over-inclusion in a close case.