Paper 24
`Date: May 13, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`PHARMATECH SOLUTIONS, INC.
`Petitioner
`
`v.
`
`LIFESCAN SCOTLAND LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00247
`Patent 7,250,105
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT E. KAMHOLZ, and SHERIDAN K.
`SNEDDEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`On May 12, 2014, a conference call was held between counsel for the
`
`respective parties and Judges Medley, Kamholz, and Snedden. The purpose of the
`
`conference call was for Patent Owner to discuss objections to (1) Petitioner’s
`
`
`
`

`
`IPR2013-00247
`Patent 7,250,105
`
`
`demonstratives filed May 7, 2014 (Paper 20) and (2) Petitioner’s request to file a
`
`
`
`motion to submit supplemental information (Paper 21).
`
`The final date for briefing in this case was May 1, 2014. Paper 12. After
`
`that date, and on May 7, 2014, Petitioner filed a paper requesting authorization to
`
`file a motion to submit supplemental information. Along with the request,
`
`Petitioner filed the motion and supplemental information. Paper 21; Ex. 1030 and
`
`Ex. 1031. Patent Owner objected to the filing of the motion, arguing that
`
`Petitioner’s submission was not provided within the rules for this proceeding.
`
`Petitioner argued that Patent Owner made inconsistent statements in the related
`
`litigation that must be brought to the Board’s attention and that Patent Owner had a
`
`duty of candor to inform the Board of such information. Upon further discussion,
`
`Patent Owner represented that it did not object to the Exhibits 1030 and 1031
`
`remaining a part of the record, but that if the motion remained in the record, then
`
`Patent Owner should be afforded an opportunity to respond.
`
`
`
`Petitioner circumvented the rules by submitting the motion prior to receiving
`
`Board authorization to file the motion. It is of no moment that the motion was
`
`accompanied by a request. A party must seek authorization to file a motion before
`
`it files the motion. See 37 C.F.R. § 42.20(b). This is especially so when a party
`
`seeks authorization to file a motion along with supplemental information towards
`
`the end of the trial. See 37 C.F.R. § 42.123(b). Moreover, we were not persuaded
`
`by the arguments presented by Petitioner that it would be in the interests-of-justice
`
`to consider briefing on the matter presented. Accordingly, the motion to submit
`
`supplemental information (Paper 21) will be expunged from the record. The
`
`parties and the Board agreed, however, based on the facts of this case that the
`
`Exhibits 1030 and 1031 shall remain a part of the record. However, no arguments
`
`may be made during the hearing regarding the exhibits.
`
`2
`
`
`

`
`IPR2013-00247
`Patent 7,250,105
`
`
`
`
`
`
`
`
`Petitioner’s Demonstratives
`
`
`
`Petitioner’s demonstratives submitted on May 7, 2014 contained information
`
`directed to the supplemental information. As explained above, the parties may not
`
`argue the propriety of Exhibits 1030 and 1031. Accordingly, Petitioner
`
`resubmitted a new set of demonstratives on May 12, 2014 removing references to
`
`the supplemental information.
`
`It is
`
`ORDERED that the motion filed on May 7, 2014 (Paper 21) be expunged;
`
`FURTHER ORDERED that the Petitioner’s Demonstratives filed May 7,
`
`
`
`
`
`
`
`2014 (Paper 20) be expunged.
`
`
`
`
`
`
`
`3
`
`
`

`
`
`
`
`
`IPR2013-00247
`Patent 7,250,105
`
`
`
`
`
`For PETITIONER:
`
`William Rudy
`patent@lathropgage.com
`
`A. Justin Poplin
`patent@lathropgage.com
`
`For PATENT OWNER:
`
`Dianne Elderkin
`delderkin@akingump.com
`
`Steven Maslowski
`smaslowski@akingump.com
`
`
`
`4