Takeaway: No new testimony evidence is permitted in a preliminary response, but the Board will not consider a motion to strike on the issue because it will decide what is impermissible new testimony evidence in its decision on institution without such a motion.

In its Order, the Board denied authorization to Petitioner to file a motion to strike Patent Owner’s Preliminary Response and denied authorization to Petitioner to file a motion to stay a related ex partereexamination.  Petitioner requested leave to file a motion to strike Patent Owner’s Preliminary Response for including new testimony evidence that is prohibited by 37 C.F.R. § 42.107(c).  However, the Board denied leave to file the motion, because the Board would address the issue of adding new testimony evidence in its decision regarding institution.  Also, the Board denied leave to file a motion to stay a related reexamination, because such a motion is premature until a decision on institution is rendered in this case.

Lone Star Distribution, Inc. v. Thermolife International, LLC, IPR2014-01201
Paper 11: Order on Conduct of the Proceeding 
Dated: November 18, 2014 
Patents: 8,455,531 
Before: Jacqueline Wright Bonilla, Sheridan K. Snedden, and Zhenyu Yang
Written by: Bonilla