After institution of trial, a patent owner may file a response to the petition and institution decision. The petitioner may then file a reply. In some circumstances, the Board may permit the petitioner to file a reply to the patent owner’s preliminary response to the petition, prior to the Board issuing a decision on institution. 37 C.F.R. 42.23(b) provides that a reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Circ. 2015). The Federal Circuit held that new evidence submitted with an expert declaration filed with petitioner’s reply did not violate patent owner’s procedural rights because the expert declaration was responsive to patent owner’s arguments, and patent owner had an opportunity to respond to the evidence. The evidence submitted with the expert declaration was directed to the ordinary level of skill in the art, and the Board made it clear that it did not rely on the background references for the prima facie case of obviousness. The evidence was not improper under 37 C.F.R. 42.23(b) because the evidence was responsive to patent owner’s arguments in the patent owner response. Since patent owner did not seek to file a surreply, to file additional observations on cross-examination of the declarant, to make arguments in those observations, or to have the Board waive any other regulations that patentee believed prevented it from adequately responding to expert’s declaration, patent owner did not exhaust its procedural rights. Therefore, patent owner had a meaningful opportunity to respond to the evidence.
Dell Inc. v. Acceleron, LLC, 818 F. 3d 1293 (Fed. Cir. 2016). The Board is not permitted to rely on arguments and “key factual determinations” raised for the first time at oral hearing. Patent owner is entitled to notice of and a fair opportunity to respond to grounds of challenge. The Board denied patent owner its procedural rights by relying in its final written decision on a factual assertion introduced into the proceeding only at oral argument, when patent owner could not meaningfully respond.
Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharmaceutical Inc., 825 F.3d 1360 (Fed. Cir. 2016). The Board did not violate the Administrative Procedure Act when it relied upon prior art references to establish the state of the art at the time of the claimed invention, when those references were not relied upon for institution or cited in the petition. “There is no requirement, either in the Board’s regulations, or the APA, or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial.” Petitioner newly cited the background references in its petitioner reply in response to patent owner’s argument. The Federal Circuit held that patent owner had notice of those of references and therefore had an opportunity to be heard with regard to those references. The Federal Circuit noted that patent owner could have pursued a motion to file a sur-reply to address the background references, or filed a motion to exclude those references. These procedural remedies, which patent owner did not pursue, provided patent an opportunity to be heard about the background references.
Cyanotech Corp. v. The Board of Trustees of the Univ. of Illinois, IPR2013-00401, Paper 44 (PTAB June 6, 2014). The Board declined authorization for patent owner to file a motion to exclude or any other type of challenge to petitioner’s reply for allegedly presenting new arguments or evidence that were not presented in the petition. The Board indicated that the question of whether petitioner’s reply exceeded the proper scope of reply under 37 C.F.R. § 42.23 will be addressed by the Board when preparing the final written decision. The Board cautioned petitioner that a reply that raises new issues or belatedly introduces new evidence will not be considered. The Board will not distinguish proper portions of the reply from improper portions.
BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014). In its reply, petitioner argued that Fig. 20 of the principal reference disclosed all the features of several claims. While noting that petitioner cited to Fig. 20 in its petition, the Board indicated that petitioner did not make that argument in its petition. The Board therefore declined to consider petitioner’s argument based on Fig. 20 in the final written decision. Under 37 C.F.R. § 42.23(b), a reply may only respond to arguments raised in the corresponding opposition or patent owner response.
Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, Paper 13 (July 16, 2014). Petitioner filed a reply to patent owner’s preliminary response, without prior authorization from the Board. The Board indicated that the rules “do not contemplate or authorize the filing of a reply to a preliminary response. If a party desires to file such a reply, it would have to seek prior authorization from the Board.” Since petitioner did not seek prior authorization from the Board before filing the reply to patent owner’s preliminary response, the reply was expunged.
Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555, Paper 36 (PTAB Oct. 9, 2015). The Board authorized the parties to present additional briefing on whether petitioner prevented new evidence in its reply. The Board remarked that new issues raised in a reply have been, and continue to be, a problem in IPR cases. Belated presentation of reply evidence can be prejudicial to a patent owner. On the other hand, patent owners have too often cried foul when evidence is properly relied upon in a reply. In a reply, a petitioner legitimately may respond to arguments made in an opposition. To do so, often it is necessary to rely on (1) evidence already cited in a petition or (2) new evidence. A motion to supplement is not necessary if evidence relied upon in a reply is limited to responding to arguments made in an opposition. Furthermore, in a petition, a petitioner does not have to anticipate all possible arguments which a patent owner made present in an opposition on the merits.
Nintendo of Am., Inc. v. iLife Tech, IPR2015-00105, Paper 23 (PTAB Nov. 10, 2015). The Board authorized patent owner to file a paper identifying those portions of petitioner’s reply that are believed to contain new evidence and/or argument. The Board required that the paper, which was limited to two pages, be in the form of a list providing the location and a concise description of any portion of petitioner’s reply that patent owner wishes to draw to the Board’s attention. The Board also authorized petitioner to file a paper, limited to two pages, identifying what petitioner regards as the material contained in the patent owner response which triggered or caused petitioner to include in its reply each item listed by patent owner and/or where each item listed by patent owner appears in the petition. The Board cautioned that patent owner and petitioner’s papers could not contain argument.
Samsung Elecs. Co. Ltd. v. Affinity Labs of Texas, LLC, IPR2014-01181, Paper 36 (PTAB Jan. 28, 2016). Patent owner argued that petitioner provided new arguments and evidence in its reply with respect to the construction of a claim term, and used additional citations to exhibits filed with the petition to support its arguments in the reply. The Board determined that the allegedly new arguments and evidence were not improper. Petitioner cannot anticipate or seek to refute every possible argument that will be made by patent owner in its petition. Petitioner is entitled to provide argument and evidence in its reply to refute arguments and evidence in patent owner’s response. Moreover, patent owner had sufficient opportunity through cross-examination and motions for observations on cross-examination to address the evidence submitted by petitioner in its reply.
Google Inc. v. Visual Real Estate, Inc., IPR2014-01340, Paper 38 (PTAB Feb. 25, 2016). The Board denied patent owner’s motion to exclude the declaration of petitioner’s rebuttal witness submitted with the petitioner reply. Patent owner argued that the rebuttal testimony exceeded the scope of the reply and was irrelevant. A motion to exclude is not a proper vehicle for a party to raise the issue of testimony in a rebuttal declaration exceeding the permissible scope of reply testimony. The Board also determined that the objected-to testimony was responsive to patent owner’s arguments.
Geosys-Intl, Inc. v. Farmer’s Edge Precision Consulting, Inc., IPR2015-00708, Paper 19 (PTAB Feb. 26, 2016). The Board denied authorization for patent owner to file a sur-reply to address allegedly new material presented in petitioner’s reply that was, according to patent owner, not present in the petition and not responsive to arguments made in the patent owner response. The Board authorized patent owner to file a paper identifying the specific portions of petitioner’s reply which patent owner believes to be non-responsive content. The Board indicated that patent owner’s paper may not include any substantive arguments.
SNF Holding Co. v. BASF Corp., IPR2015-00600, Paper 30 (PTAB Feb. 29, 2016). The Board denied authorization for patent owner to file a motion to strike a portion of petitioner’s reply that was alleged to contain argument and evidence that exceeded the scope of patent owner’s response. The Board authorized patent owner to file a two-page paper, limited to identifying by page and line number, each alleged instance of improper argument or evidence in the reply, including a one-sentence explanation of each instance. The Board authorized petitioner to file a two-page response. The Board will then determine whether petitioner’s reply and related evidence are outside the scope of a proper reply under 37 C.F.R. § 42.23(b), when preparing a final written decision. With respect to patent owner’s assertion that the reply takes expert testimony out of context or misrepresents opinions of patent owner’s experts, patent owner can address those concerns at oral argument.
Silicon Labs., Inc. v. Cresta Tech. Corp., IPR2015-00615, Paper 26 (PTAB Feb. 29, 2016). The Board denied authorization for patent owner to file a motion to strike portions of the petitioner’s reply and reply declaration as beyond the scope of patent owner’s response and using improper incorporation. The Board explained the differences between permitting patent owner to file a paper identifying those portions of the reply and reply declaration which are believed to be new evidence or argument (list approach), and a motion to strike. The Board explained that the primary distinction between a motion to strike approach and the list approach is that with the motion there is a potential to strike some portions of the record, while in the list approach even portions that are not considered remain in the record. The Board stated its preference for the list approach so that the record is complete. Then, should the Board incorrectly determine that portions of petitioner’s reply are beyond the scope of patent owner’s response, those portions remain in the record for consideration on appeal.
Camelback Prods., LLC v. Ignite USA, LLC, IPR2015-01034, Paper 24 (PTAB Mar. 10, 2016). The Board denied authorization for patent owner to file a sur-reply to petitioner’s reply to address allegedly new arguments and evidence in petitioner’s reply. Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to the determination of the Board. The Board will determine whether petitioner’s reply and evidence are outside the scope of a proper reply when the Board reviews all of the parties’ briefs and prepares the final written decision. If there are improper arguments or evidence presented in the reply, the Board may exclude the reply and related evidence. The Board indicated that patent owner is permitted to cross-examine replay declarants and, if necessary, file a motion for observation regarding cross-examination of a reply witness.
Kingston Tech. Co., Inc. v. Imation Corp., IPR2015-00066, Paper 19 (PTAB Mar. 24, 2016). The Board refused to consider the merit of petitioner’s arguments at oral hearing that a first of two embodiments of an asserted reference anticipated the claims, when the petition and the supporting expert declaration relied solely on the second embodiment to allege that the claims are anticipated. Petitioner’s new arguments suffer from several deficiencies. First, they do not comply with the requirements of 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5) to specify with particularity where each element of the claim is disclosed in the prior art. Second, the institution decision, which was responsive to the petition, did not provide patent owner with notice of grounds of challenge based on the first embodiment, depriving patent owner of reasonable notice and opportunity to respond. Third, the oral hearing is not an opportunity to make new arguments. Fourth, even if the Board was to consider petitioner’s arguments at oral hearing, they are merely attorney argument, devoid of evidentiary support, and are entitled to no weight.
Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01508, Paper 49 (PTAB Mar. 29, 2016). The Board denied patent owner’s motion to exclude portions of petitioner’s reply as untimely. Patent owner argued that petitioner’s reply contains “new unsupported attorney arguments” regarding the teachings of an asserted reference in relation to several claim features, and that patent owner is prejudiced by the inability to cross-examine petitioner’s expert regarding these arguments. The Board indicated that a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply. Whether a reply contains arguments or evidence that are outside of a proper reply under 37 C.F.R. § 42.23(b) is left to the Board’s determination.
Apple, Inc. v. Ameranth Inc., CBM2015-00080, Paper 27 (PTAB Apr. 1, 2016). The Board denied authorization for patent owner to file a motion to strike portions of petitioner’s reply and several accompanying exhibits. Patent owner alleged that arguments in petitioner’s reply and accompanying exhibits are outside the proper scope of a reply. Petitioner disputed this contention. The Board denied patent owner’s request for authorization to file motions to strike. The Board will determine for itself whether arguments in the reply and the exhibits are outside the appropriate scope and, if so, not consider those arguments and exhibits.
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 85 (PTAB Apr. 14, 2016). The Board denied patent owner’s motion to exclude a declaration supporting petitioner’s reply for allegedly including new arguments and evidence. “Evidently, Patent Owner believes that material concerning obviousness of the claimed invention over the applied references must be submitted only in the Petition, and never in the Reply. That simply is incorrect. Petitioner is entitled to respond to arguments and evidence presented by Patent Owner in the Patent Owner Response. Petitioner generally gets the last word because it is the party charged with the burden of proof with respect to its claim challenges.”
WhatsApp Inc. v. Triplay, Inc., IPR2015-00740, Paper 42 (PTAB Apr. 19, 2016). The Board denied authorization for patent owner to file a sur-reply to adress patent owner’s contentions that arguments in petitioner’s reply and reply declaration exceed the scope of the arguments in the patent owner response. “Generally, the Board will determine for itself whether arguments in the replies and the exhibits are outside the appropriate scope under 37 C.F.R. § 42.23(b) and, if so, not consider those arguments and exhibits.” The Board authorized patent owner to file a two-page submission that identifies, in the form of a sequentially numbered, itemized list, arguments and evidence in the reply and accompanying exhibits that patent owner contends exceeds the proper scope of a reply. No explanation, elaboration, or discussion should be included in the submission.
Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., PGR2015-00011, Paper 38 (PTAB May 18, 2016). The Board authorized patent owner to file an identification of improper new reply materials. Patent owner objected to, under 37 C.F.R. § 42.64(b)(1), the evidence at issue as untimely and/or exceeding the proper scope of a reply. A motion to exclude, together with the corresponding objection, is not an appropriate vehicle for challenging a reply or supporting evidence as being of improper scope. An objection and motion to exclude under § 42.64 are reserved for challenging the admissibility of evidence under the Federal Rules of Evidence. The Board authorized patent owner to file a two-page document, identifying with particularity each argument or evidence in the reply that patent owner alleges as inappropriate new argument or evidence. The Board also authorized petitioner to file a two-page response, identifying with particularity (1) the arguments in the patent owner’s response that each challenged argument or evidence is responsive to; and/or (2) the arguments in the petition that provide a sufficient basis to justify characterizing each challenged argument or evidence as not improperly new.
10X Genomics, Inc. v. The Univ. of Chicago, IPR2015-01157, Paper 30 (PTAB May 26, 2016). The Board denied authorization for patent owner’s motion to strike the direct testimony of petitioner’s expert as being outside the scope of the reply, and the expert’s cross-examination testimony during his second deposition as nonresponsive. Any non-responsiveness of a witness to questioning during cross-examination would go to the weight given to that witness’s direct testimony. A motion to strike the testimony altogether was not warranted. Rather, patent owner could call the Board’s attention to the alleged non-responsiveness of petitioner’s expert by filing observations on cross-examination. The Board authorized patent owner to file a short numbered list of portions of the expert’s testimony that are allegedly beyond the scope of a proper reply. The Board will determine whether the Declaration contains improper testimony when it reviews the record as a whole, and may disregard any testimony that goes beyond the permitted scope of a reply.