Board Considers Propriety of Deposition Exhibits in Sur-Reply

As a reminder, a Patent Owner Sur-Reply may only be accompanied by the last deposition transcript – no other exhibits. 37 C.F.R. § 42.23(b)  Recently, the Board has considered the propriety of additional sur-reply exhibits that were introduced at deposition. That is, if not policed, the last deposition might present an opportunity to “back-door” additional exhibits to circumvent the rule.

The Board’s view of this practice may depend upon the exhibit.

In one recent case, Petitioner moved to exclude exhibits presented to a technical expert during a deposition and filed with Patent Owner’s Sur-Reply. Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., IPR2020-00349, Paper 53 (PTAB July 15, 2021).  Petitioner argued that the introduction of exhibits with the sur-reply violated the Board’s procedural rules and deprived it of the ability to respond. Patent owner replied that the motion was improper because it failed to raise an evidentiary objection.

The Board concluded that a broad rule allowing the introduction of any exhibit at deposition would create incentives to introduce evidence at a late stage. However, in this case the exhibits were introduced during the deposition to test the testimony of the witness and the Board should view the testimony in the full context.

The Board noted, though, that the exhibits would only be considered by the Board for that purpose as opposed to evidence supporting the party’s arguments on the merits.

In a second recent case, Petitioner moved to exclude exhibits presented to a technical expert during their deposition and filed with Patent Owner’s Sur-Reply as a procedural violation. See Netflix Inc. v. DivX, LLC, IPR2020-00511, Paper 46 (Aug. 13, 2021). Patent Owner responded that, similarly to the above, the exhibits provided context to the deposition transcript and that the Board should view the record in the entirety. Moreover, Petitioner did not object to the use of the exhibits at the deposition.

The Board noted that according to Rule 42.23(b), “new evidence other than deposition transcripts of the cross-examination of any reply witness,” is not permitted. See 37 C.F.R. § 42.23(b).  More importantly, though, in contrast to the Ascend Performance case, the witness testified that he was not familiar with the exhibits and thus the exhibits themselves did not provide context to the transcript itself.

In essence, the Board’s second decision highlights the importance of the early introduction of evidence and that withholding exhibits for strategic purposes will likely result in exclusion. Further, while the Board concluded that an objection was not necessary here, the discussion additionally reminds practitioners of the importance of prompt objections during depositions.