McCaffrey Barbee

The following text is taken from an email I sent to PTAB practitioner's email list service on 8/7/2013. Whenever an APJ orders action or inaction inconsistent with a rule, it should be required by Board policy to identify the inconsistency and expressly notify the parties that it is waiving or suspending that rule. Read More Rule 42.5 states that "(b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension." Rule "42.70 (b) Demonstrative exhibits" states that: Demonstrative exhibits must be served at least five business days before the oral argument and filed no later than the time of the oral argument. [Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; emphasis supplied.] In Motivepower, Inc. v. Cutsforth, Inc., IPR2013-00267, paper 32 (PTAB 8/5/2014) (Order by APJ Ward, for a panel consisting of APJs Ward, Quinn, and DeFranco), the panel expunged filed demonstrative exhibits, stating: On July 30, 2014, Patent Owner filed a document titled "Patent Owner's Updated Exhibit List" and Exhibit 2062, containing 3 parts, in each of the above referenced inter partes review proceedings. ... The three parts of Exhibit 2062 filed in each case provide copies of Patent Owner's demonstratives for the oral hearing. See id. We did not authorize these filings. In fact, the Trial Hearing Order specifically stated that "[t]he parties shall not file any demonstrative exhibits in this proceeding without prior authorization from the Board." *** Instead, we requested that the parties serve the exhibits by email to the Board. *** ORDERED ... [that these documents] shall be expunged from the records of these proceedings. [Second italics added for emphasis.] That Order, paper 32, was inconsistent with rule 42.70(b). Order, paper 32 refers to the "Trial Hearing Order". There is no Order in the record titled "Trial Hearing Order". There is an Order in the record dated July 9, 2014, titled "Order Request for Oral Argument 37 C.F.R. § 42.70" which states in relevant part: