If there is an early lesson to learn regarding protocols to be followed in Inter Partes Review proceedings, it is to make sure you have permission for anything you do before the PTAB. There are a select few actions that do not require permission, because they are allowable by rule (filing of mandatory notices, patent owner statements, etc.), but for everything else – permission to file must be granted.
This cautionary tale played out in IPR2012-00006 (Illumina, Inc. v. Trustees of Columbia University), and related cases, in which the patent challenger, Illumina, Inc. filed a motion for leave to waive the page limit in the filing of its petition. The patent owner, Trustees of Columbia University, filed an opposition to that motion, arguing that no good cause had been shown for the filing of an over-length petition. While the story turned out just fine for the Trustees (the motion to waive the page limit was denied), the preparation of the opposition was wasted because the Board expunged the opposition from the proceeding given that no permission was requested (and granted) to file such an opposition. This expunging is authorized by the Trial Practice Rules, specifically 37 CFR 47.7(a): “The Board may expunge any paper directed to a proceeding or filed while an application or patent is under the jurisdiction of the Board that is not authorized under this part or in a Board order or that is filed contrary to a Board order.”
The Board is sending an early message in Inter Partes Review proceedings – these proceedings will be closely controlled by the PTAB and very little, if any, leeway is going to be granted from the strict requirements of the Trial Practice Rules.