The parties may use demonstrative exhibits at the oral hearing. 37 C.F.R. § 42.70(b). The demonstratives may not contain any evidence or arguments that was not previously presented during the trial.
CBS Interactive Inc. v. Helfrich Patent Licensing, LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013). This Order provides an explanation of the rules for demonstrative exhibits at oral hearing. Demonstratives may not contain any new arguments or new evidence. The demonstratives may only contain arguments and evidence that were presented in the parties’ pleadings prior to oral hearing. Different characterizations of the evidence and different inferences drawn from the evidence are new arguments. The burden on showing that a demonstrative slide does not present new argument or new evidence is on the party presenting the slide.
EMC Corp. v. Personal Web Techs., LLC, IPR2013-00085, Paper 70 (PTAB Dec. 13, 2013). At a final oral hearing, a party may rely upon evidence that has been submitted previously in the proceeding and only may present arguments relied upon in the papers submitted previously. Demonstrative exhibits may not include new evidence or arguments. The Board denied authorization for petitioner to use a CD-ROM at oral hearing because a physical copy of the CD-ROM was not in evidence and was not served on patent owner. Introducing new evidence at this late juncture—when the trial issues had been briefed fully by both parties—would prejudice patent owner, who would not have the opportunity to respond or challenge the authentication of the CD-ROM. The Board denied authorization for patent owner to file a motion to exclude any of petitioner’s demonstrative slides that are not discussed substantively at the oral hearing. Demonstrative exhibits are not evidence. Unless patent owner can show that the demonstratives include new evidence or arguments, exclusion is unnecessary.
St. Jude Medical v. The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014). Demonstrative exhibits are not evidence, and as such, the exhibits cannot add new evidence to the record of the proceeding. Demonstrative exhibits are not an opportunity for additional briefing. Demonstrative exhibits cannot rely on evidence that, although it is in the record, was never specifically discussed in any paper before the Board.
International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 41 (PTAB Jan. 14, 2016). The Board precluded patent owner from using five demonstrative slides at oral hearing because the slides included testimony from the declaration of patent owner’s expert that were not cited in the patent owner response or any other paper. Despite Petitioner’s acknowledgement that patent owner made arguments similar to those proposed in the slides, the Board determined that paragraphs in the declaration not cited in the patent owner response could not be used in demonstratives, citing CBS Interactive.
J Squared, Inc. d/b/a Univ. Loft Co. v. Sauder Mfg. Co., IPR2015-00774, Paper 30 (PTAB Apr. 4, 2016). The Board denied patent owner’s request to bring physical specimens of its commercial product and of petitioner’s commercial product to the oral argument for inspection by the Board. “A trial before the Board is conducted on paper. By the time the proceeding reaches final oral argument, nothing new can be presented, no new evidence, no new arguments. . . . [I]n light of the fact that Patent Owner has not requested introduction of the physical commercial chairs into the record, such introduction at this stage of the proceeding would need to be approved through a motion for supplemental information. Patent Owner has not filed such a motion. We do not, by this order, provide authorization for Patent Owner to file a motion to submit this supplemental information, because Patent Owner was clearly in possession of these physical samples at the time it filed its Patent Owner Response, and thus, Patent Owner likely cannot now show why the supplemental information reasonably could not have been obtained earlier, as required by 37 C.F.R. § 42.123(b).”
Medtronic, Inc. v. Barry, IPR2015-00780, Paper 48 (PTAB May 13, 2016). The Board rejected petitioner’s argument that patent owner, in its demonstratives, could not cite to a passage of an exhibit that was not cited in a pleading. The Board indicated that petitioner was not prejudiced by citing to the passage because the exhibit was cited. The Board also permitted patent owner to, in its demonstratives, cite to testimony of patent owner’s expert that is consistent with or provides context to arguments already made by patent owner or that disputes characterizations made by petitioner during the cross-examination or in the petitioner reply, as long as the cited testimony does not “expand” the arguments made by patent owner in its response.
Inline Packaging, LLC v. Graphic Packaging Int’l, Inc., IPR2015-01609, Paper 49 (PTAB Sept. 27, 2016). The Board denied petitioner’s motion to strike patent owner’s proposed demonstratives as allegedly outside the scope of proper demonstratives. The Board indicated that, while it agreed with petitioner that patent owner’s slides did not appear to be fully supported by the evidence of record, it was unwilling to strike the demonstratives two days before the oral hearing. Due to the time constraints, the Board indicated that it was not in a position to determine definitively, in a timely manner, whether patent owner’s positions are properly responsive to petitioner’s assertions. The Board informed the parties that, in rendering its final written decision, the Board will exclude from consideration any slide of patent owners that are outside the scope of a proper demonstrative slide. “To hold otherwise would allow Patent Owner to present new arguments at this late juncture without providing Petitioner an adequate opportunity to respond. Indeed, the proper procedure to present such new arguments in this proceeding would have been to request to file a sur-reply earlier in the proceeding.”