Written by Damien Howard and Nathanael Luman, Ph.D.

The PTAB expunged non-compliant motions for observations on cross-examination in Xilinx, Inc. v. Papst Licensing GMBH & Co., KG, IPR2016-00104, Paper 22 & IPR2016-00105, Paper 22 (P.T.A.B. May 3, 2017).

Papst, the Patent Owner, filed a motion for observations on cross-examination testimony in two IPR proceedings brought by Petitioner Xilinx. The Petitioner opposed the motions and asserted that the observations should be disregarded because that they failed to follow the Office Patent Trial Practice Guide. The Guide states that observations should be in the following form:

In exhibit __, on page __, lines __, the witness testified __. This testimony is relevant to the __ on page __ of __. The testimony is relevant because __.

The PTAB found that the observations did not provide the substantive information required by the Guide for two reasons: (1) the Patent Owner did not provide citations to where the Patent Owner’s arguments were made in the record, and (2) the Patent Owner did not explain why the testimony was relevant. The PTAB therefore determined that the observations were not compliant with the Guide, constituted additional unauthorized briefing, and expunged the motions.

These decisions provide a reminder that practitioners should take care to closely follow the observation format provided in the Office Patent Trial Practice Guide to ensure all of the required citations and explanations are present and clearly identifiable by the PTAB.