In a recent order in Omega Liner Company, Inc. v. BUERGOFOL GmbH, the Patent Trial and Appeal Board denied Patent Owner’s request to submit new inventor declarations with its sur-reply, highlighting the high bar for introducing new evidence late in inter partes review proceedings.
The case involves Patent 9,657,882 B2, where two inventors, Dr. Boutrid and Mr. Schleicher, previously provided declarations supporting the Patent Owner’s Response. The controversy arose when Petitioner Omega Liner alleged in its Reply that these declarations contained false statements and misrepresentations.
Majority Finds No “Extraordinary Circumstances”
Judge Grace Karaffa Obermann, writing for the majority, emphasized that Patent Owner failed to demonstrate the “extraordinary circumstances” required to deviate from rule 37 C.F.R. § 42.23(b) prohibiting new declaration evidence with a sur-reply. “Importantly, Patent Owner does not ‘acknowledge, let alone address, its burden to establish ‘extraordinary circumstances’ that could warrant waiving the rule barring new’ declaration evidence with a sur-reply,” the Board noted.
The majority was unconvinced by Patent Owner’s argument that “the only way to raise facts to the Board’s attention is by submission of declaration testimony,” finding it conclusory and insufficient to justify the extraordinary relief requested. “Patent Owner is free to explain in its Sur-reply why and how the Reply misquotes or misconstrues documents in the record, without reliance on the proposed new declarations,” Judge Obermann wrote.
Timing and Prejudice Concerns
The Board also expressed concern about the timing of the request, with the final hearing scheduled for December 17, 2024—less than a month after the Sur-reply deadline.
“Petitioner persuasively argues that this would impose ‘a significant burden’ on Petitioner ‘during final oral argument preparations,'” the majority observed, noting that “waiving our rule to permit filing of the proposed new declarations in support of Patent Owner’s Sur-reply may implicate compelled discovery” needed to impeach the inventors over their new declarations that is in the possession of an uncooperative third party, located outside the United States.
Dissenting View: Inventors Deserve Opportunity to Respond
Judge Kimberly McGraw dissented, arguing that the circumstances warranted allowing the new declarations.
“Because Petitioner’s Reply alleges that Patent Owner’s Original Declarations contain false statements and misrepresentations, under the particular facts and circumstances presented here, I would permit Patent Owner to submit, with its sur-reply, declarations and evidence to rebut these allegations,” Judge McGraw wrote. “Otherwise, Patent Owner and the declarants would have no opportunity to rebut Petitioner’s allegations of false statements and misrepresentations.”
Procedural Impact
While denying Patent Owner’s motion, the Board ruled that the proposed new declarations (submitted as Exhibits) will remain in the record for appeal purposes but cannot be filed, cited, or referenced in connection with Patent Owner’s Sur-reply.
This decision underscores the PTAB’s strict adherence to its procedural rules governing the submission of new evidence, particularly at later stages of inter partes review proceedings, and the high threshold required to demonstrate “extraordinary circumstances” warranting an exception to these rules.
The case was decided before Administrative Patent Judges Grace Karaffa Obermann, Judge Kimberly McGraw, and Judge James Mayberry, with Judge Obermann writing for the Board with dissent by Judge McGraw. The decision is Omega Liner Company, Inc. v. BUERGOFOL GmbH, Case No. IPR2023-01372, Paper 44 (PTAB Nov. 18, 2024)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.