Takeaway: A party may not embed unauthorized motions within its papers filed with the Board.

In its Order, the Board expunged Patent Owner’s Preliminary Response and further ordered Patent Owner to file a Revised Preliminary Response, which deletes material from the Preliminary Response that was not authorized by the Board.

After the Preliminary Response was filed, Petitioner requested a conference call with the Board to discuss arguments that were raised in the Preliminary Response. In particular, as the Board noted, the Preliminary Response “expressly requests . . . that the Board use its discretion to dismiss the Petition and award Patent Owner attorney’s fees associated with the proceeding, as ‘sanctions pursuant to 37 C.F.R. § 42.12 are warranted.’”

The Board indicated that motions for sanctions may not be filed without authorization pursuant to 37 C.F.R. § 42.20(b). The embedded motion within the Preliminary Response was not proper, and therefore, the Board expunged the filing.  The Board ordered Patent Owner to file a Revised Preliminary Response, “which deletes all assertions of intentional misconduct and any requests for imposition of sanction.”

Iron Dome LLC v. Chinook Licensing DE LLC, IPR2014-00674
Paper 7:  Order on Conduct of the Proceeding
Dated: August 7, 2014
Patent: 7,047,482
Before: William V. Saindon, James P. Calve, and Trenton A. Ward
Written by: Ward