Got Demonstrative Exhibits?

During oral argument, demonstrative exhibits can be a useful tool to direct the judges to key arguments and points of rebuttal. As specified in the Trial Practice Guide, the Board prohibits the presentation of new evidence in demonstratives. Recent Board orders further detail that prohibition.

For example, the Board in CBS Interactive Inc. v. Helferich Patent Licensing (IPR2013-00033) (Paper 118) (Oct. 23, 2013) proscribed petitioner and patent owner from using any of their demonstrative slides because many, though not all, were non-compliant. The Board’s specific guidance on the appropriate content of demonstrative exhibits included: (1) there is no new evidence or new arguments in demonstratives; (2) there is no proper basis for presenting “written text setting for various statements, characterizations, and assertions” as demonstrative exhibits; and (3) the burden is on the party presenting the demonstrative slide that it does not present new argument or new evidence.

In St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan (IPR2013-00041) (Paper 65) (Jan. 27, 2014), the Board explained that demonstratives cannot rely on evidence that was never specifically discussed in any paper before the Board, even if the evidence was in the record. Further, the patent owner’s “demonstrative exhibits constitute a single paper, and thus . . . all of the slides of the demonstratives stand or fall together.” Nevertheless, unlike CBS Interactive, the Board in St. Jude exercised their discretion to allow the use of demonstrative slides, explaining that demonstratives are not evidence, and cautioning that the party’s identification of demonstrative slide numbers during oral argument would not provide a meaningful reference in the official transcript of the hearing.

Other Board orders that are instructive for preparing compliant demonstratives include Corning Gilbert Inc. v. PPC Broadband, Inc. (IPR2013-00340) (Paper 74) (July 23, 2014), where the Board expunged a patent owner’s previously filed demonstratives and allowed a set of conforming demonstratives to be filed by noon on the day before oral argument. In Corning Inc. v. DSM IP Assets B.V. (IPR2013-00043-50, 52, 53) (Paper 92) (February 10, 2014), petitioner objected to patent owner’s demonstratives, arguing that they were voluminous. The Board, however, decided that this was a time management matter to be left to patent owner and allowed use of the demonstratives.

The Trial Practice Guide also provides guidance when lodging an objection to an opponent’s demonstratives. To date, the Board has taken different approaches to objections. For example, in Chicago Mercantile Exchange, Inc. v. 5^th Market, Inc. (CBM2013-00027) (Paper 30) (July 27, 2014), the Board required the parties to initiate a conference call at least two business days before the hearing to discuss any issues with either party’s proposed demonstratives. In K-40 Electronics, LLC v. Escort, Inc. (IPR2013-00203, 240) (May 15, 2014), however, the Board required the parties to file written objections to demonstratives at least two business days before the argument. Additionally, the Board required that any objection particularly identify the objected-to demonstrative and explain the reason for the objection.