Post-grant proceedings before the Patent Trial and Appeal Board (PTAB) are governed by specific rules that tightly regulate the timing and opportunity for presenting arguments and evidence.  See 37 C.F.R § 42.  In general, the party carrying the burden of proof on the issue at hand is given the last chance to reply.  However, even if the rules do not explicitly contemplate further replies as a matter of right, the PTAB has in limited circumstances authorized parties to file a sur-reply.

What is a Sur-reply?

When a party is not allowed to file a paper as a matter of right, it may request to file its arguments in the form of a sur-reply.  See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081-82 (Fed. Cir.  2015).  The PTAB has indicated that substantive arguments in a post-grant proceeding must be presented through the appropriate channels and procedures.  See, e.g., H.P. v. Philips, IPR2015-01505, Paper 15 (PTAB Dec. 16, 2015) and Nissan N. Am., Inc. v. Collins, et al., IPR 2012-00035, Paper 24 (PTAB Jan. 25, 2013) (finding that emails to the PTAB containing substantive arguments are inappropriate).

A party must request the Board for authorization to file a sur-reply.  See 37 C.F.R. § 42.20(b) and Autoquip, Inc. v. Graco Minnesota, Inc., IPR2013-00452, Paper 17 (PTAB Jun. 30, 2014) (finding it necessary to expunge a sur-reply filed without the Board’s prior authorization).  The Board has discretion on whether or not to grant such a request, even if the parties agree in advance to the filing of the sur-reply.   See, e.g., Zero Gravity Inside, Inc. v. FootBalance System Oy, IPR2015-01769, 70, Paper 11 (PTAB Nov. 9, 2015).

In instances where the Board has granted sur-replies (discussed further below), the reply is generally limited to a few pages and may only address specific issues authorized by the Board.  See, e.g., Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159, Paper 51 (PTAB Mar. 28, 2014).

Recent Treatment of Sur-replies by the PTAB

The Board’s recent treatment of requests to file sur-replies suggests a willingness to grant requests when the movant (1) demonstrates that it has the burden of production on the issue at hand, (2) makes the request in a timely manner (e.g., granting would not interfere with the Board’s statutory mandate for prompt resolution of the proceeding), and/or (3) convinces the Board that authorization would be helpful in rendering the final written decision.

Although the petitioner generally has the burden of proof on most issues in a post-grant proceeding, the Board has allowed a patent owner faced with a burden of production to file a sur-reply.  In HTC America v. NFC Technology LLC, IPR2014-01198, Paper 45 (PTAB Nov. 19, 2015), the Board authorized the patent owner’s sur-reply in response to the petitioner’s arguments that the patent owner’s attempt to antedate prior art references was insufficient.  The Board, however, required that the sur-reply be narrowly focused on this issue and did not allow introduction of new evidence.  See also Sensio, Inc. v. Select Brands, Inc., IPR2013-00580, Paper 19 (PTAB Aug. 8, 2014) (granting patent owner’s request to file a sur-reply to address new issues of conception raised by the petitioner, given that the patent owner had the burden of production to antedate the asserted prior art).

If the Board deems that a request for a sur-reply amounts to a second bite at the apple to cure deficient filings and arguments, such request will likely be denied.  In H.P. v. U.S. Philips, IPR2015-01505, Paper 15 (PTAB, Dec. 16, 2015) the Board denied petitioner’s request to reply to patent owner’s preliminary response that challenged whether petitioner’s asserted prior art qualified as a printed publication under 35 U.S.C. §§ 102 and 311(b).  The Board found that the petitioner has to show a reasonable likelihood of success in its petition, and that the request for a sur-reply was, in effect, a request for additional pages in its petition.  See also VTech v. Spherix, Inc. IPR2014-01432, Paper 12 (PTAB Jan. 21, 2015) (denying petitioner’s request to submit supplemental information after patent owner’s preliminary response because it amounted to a prohibited reply).

However, in some instances, the Board has authorized petitioners to file sur-replies after the filing of a petition in response to a patent owner’s preliminary response.  For example, the Board granted the petitioner’s request to file a sur-reply to respond to the patent owner’s assertions regarding insufficiency of a copyright notice on prior art asserted by the petitioner.  See Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-00180, Paper 9 (PTAB Mar. 25, 2016).  The Board determined that additional briefing was necessary due to varying interpretations among panels regarding the sufficiency of copyright notice to establish public accessibility for purposes of institution.  The Board, however, denied petitioner the ability to submit additional evidence to attempt to establish public accessibility of the references, since the petitioner needed to prove this element of its case in the original petition.

The Board has required moving parties to request sur-replies promptly and in a timely manner.  The Board pointed out in H.P. v. U.S. Philips, supra, that the request to file a sur-reply was made six weeks after patent owner’s preliminary response and, therefore, considering additional briefing at that late stage would jeopardize the Board’s ability to meet the statutory mandate of deciding on institution within the required period.

Finally, the Board may grant the filing of a sur-reply if the Board is persuaded that additional briefing would be helpful to the panel in rendering final written decision, or the sur-reply would simplify or streamline the proceeding by addressing multiple issues at once.  See, e.g., Nintendo of America, Inc. v. iLife Techs, Inc., IPR2015-00106, Paper 25 (PTAB, Dec. 7, 2015) and Masterimage 3d, Inc., et al. v. Reald Inc., IPR2015-00035, Paper 68 (PTAB, Dec. 3, 2015) (denying patent owner’s motion to expunge but allowing a sur-reply to present arguments that petitioner inappropriately put forth new arguments of unpatentability).

Considerations for Requesting Authorization to File a Sur-reply

Based on the Board’s recent cases, the following is a non-exhaustive list of potential factors to consider when considering whether to request to file a sur-reply:

  1. Get in the last word – The party carrying the burden of proof generally gets the last word; however, if you have the burden of production on a particular issue, you should request to file a sur-reply for the last word.
  2. Preserve your rights – Denial of your request for sur-reply may be the basis, whole or in part, for requesting rehearing. Further, if you want to appeal to the Federal Circuit and assert lack of due process in front of PTAB, it is important that you requested to file sur-replies where appropriate at the PTAB. See Belden Inc. v. Berk-Tek LLC, supra.
  3. Get your arguments on the record – You cannot make substantive arguments in an email to the Board. If you want to make arguments on the record, you need to request authorization to file a motion, such as a sur-reply. See, e.g., H.P. v. Philips, supra and Nissan N. Am., Inc. v. Collins, et al., supra.
  4. Do not rely on a sur-reply to supplement your initial case – The petitioner needs to establish in its petition a reasonable likelihood of prevailing as to at least one challenged claim. The Board may permit a petitioner use a sur-reply at this stage to respond to assertions by the patent owner, but no new evidence or arguments are allowed to supplement the petition.
  5. Always ask the Board’s permission to file a sur-reply – Don’t file arguments without the Board’s permission, let alone include the arguments in an email to the Board.
  6. Make the Request in a timely manner – Do not delay in presenting sur-reply requests. See H.P. v. U.S. Philips, supra.
  7. Appeal to the Board’s sense of fairness – Articulate a good reason why fairness and/or efficiency demands authorization of the request (e.g., you have the burden of proof or production, it will help the Board in rendering final written decision, and/or it will simplify and streamline the proceeding).
  8. Request to file a sur-reply if the law has changed during the pendency of your proceeding – See, e.g., CBM2014-00116 (authorizing a sur-reply because Supreme Court’s Alice decision came out after the petition was filed but before patent owner’s preliminary response).
  9. If a Petitioner raises new issues in a reply brief (including new expert testimony), consider requesting to file a sur-reply – The patent owner can request authorization to file a sur-reply to address the new issues. See, e.g., Zodiac Pool Systems, Inc. v. Aqua Products, Inc., supra, and Apple Inc. v. Sightsound Tech., LLC, CBM2013-00020, Paper 100 (PTAB, May 15, 2014).