In IPR, CBM and PGR proceedings, the patent owner may file an optional preliminary response to the petition. 35 U.S.C. §§ 313 and 323. If the Board institutes trial, the patent owner may file a response, and the petitioner can then file a reply to the patent owner response. 35 U.S.C. §§ 316(a)(8), 316(a)(13), 326(a)(8) and 326(a)(13). No other briefing opportunities are permitted as a matter of right. Under 37 C.F.R. § 42.20, the parties may request a motion to file a sur-reply for additional briefing.
Hewlett-Packard Co. v. U.S. Phillips Corp., IPR2015-01505, Paper 15 (PTAB Dec. 16, 2015). The Board denied petitioner’s request to file a reply to patent owner’s preliminary response, in which patent owner challenged whether several relied-upon references qualify as printed publications within the meaning of 35 U.S.C. §§ 102 and 311(b). The Board was not persuaded that additional briefing on this issue was warranted. An inter partes review may not be authorized unless the information presented in the petition shows a reasonable likelihood that petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Allowing petitioner to file a reply at this stage would be tantamount to providing additional pages for the petition. Petitioner has the burden to establish in its petition a reasonable likelihood of success, including, among other things, making a threshold showing that relied-upon references qualify as printed publications. The Board also noted that petitioner waiting six weeks until after the preliminary response was filed to request permission for the reply weighed in favor of denying authorization.
Coalition for Affordable Drugs V LLC. v. Biogen MA Inc., IPR2015-01993, Paper 18 (PTAB Feb. 3, 2016). The Board denied patent owner’s request for authorization to file a sur-reply in response to petitioner’s reply to patent owner’s preliminary response. The Board has the discretion whether to authorize filing of a sur-reply. If a sur-reply is authorized, then a further paper from petitioner would need to be considered because generally a party with the burden of proof (petitioner in this instance) is entitled to the final word. The petition, preliminary response and reply are sufficient to enable the Board to make an informed decision on whether to an institute an IPR. Moreover, to the extent that patent owner believes petitioner may have raised a “new issue” in its reply, the Board can determine sua sponte whether an appropriate new issue has been raised.
Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-00180, Paper 9 (PTAB Mar. 25, 2016). The Board authorized petitioner to file a reply to patent owner’s preliminary response to address the sufficiency of a copyright notice on three asserted prior art references. The Board indicated that additional briefing was warranted due to the varying interpretation among different panels of the PTAB as to whether a copyright notice amounts to sufficient evidence of public accessibility for purposes of institution. The Board, however, declined authorization for petitioner to submit any supplemental evidence to cure any evidentiary issues regarding the public accessibility of the asserted references. The Board indicated that “[p]etitioner was fully aware of the need to prove that element of its case at the time it filed its Petition, and, thus, evidence of that nature should have been submitted with the Petition had Petitioner wanted it considered for purposes of institution.”
Samsung Elecs. Am., Inc. v. Queen’s Univ. at Kingston, IPR2015-00583, Paper 39 (PTAB Mar. 25, 2016). In response to patent owner’s arguments that an expert report filed with petitioner’s reply presented new evidence or arguments relating to whether an asserted reference is enabling, the Board authorized patent owner to file a sur-reply limited to whether the asserted reference is enabling.
Genzyme Corp. v. Genetech, Inc., IPR2016-00383, Paper 11 (PTAB May 18, 2016). The Board authorized petitioner to file a reply directed to arguments made by patent owner in its preliminary response that the petition should be denied on the basis of 35 U.S.C. §§ 325(d) and 315(e). Patent owner argued that an entity related to petitioner had previously filed an IPR petition against the patent, and that there was a common real party-in-interest in both IPR proceedings. The Board limited petitioner’s reply to the issues raised by patent owner under 35 U.S.C. §§ 325(d) and 315(e). The Board authorized petitioner to submit additional evidence with its reply, but required petitioner to make any declarant available for a deposition before a decision on institution is made.
Vista Outdoor Operations LLC v. Liberty Ammunition, LLC, IPR2016-00539, Paper 7 (PTAB May 25, 2016). The Board authorized petitioner to file a reply to patent owner’s preliminary response to in order to respond to arguments regarding real party-in-interest (RPI) and privity. Patent owner argued that the petition should be denied under 35 U.S.C. § 315(a)(2), because petitioner did not name at least one RPI. In addition, patent owner argued that the petition should be denied under 35 U.S.C. § 315(b), because an RPI and/or a privy of petitioner was served with a complaint alleging infringement of the challenged patent more than one year prior to the petition’s filing date. The Board granted petitioner’s request to file a reply because the statutory bar of 35 U.S.C. § 315(b) is a threshold issue, and a reply would assist the Board in deciding these issues in the proceeding.
Kayak Software Corp. v. Int’l Bus. Machs. Corp., IPR2016-00605, Paper 11 (PTAB June 2, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address a split on the Board as to how it treats copyright dates on documents in evaluating whether references would have been publicly available to qualify as a printed publication. The Board indicated that petitioner did not establish good cause to submit additional briefing.
Kayak Software Corp. v. Int’l Bus. Machs. Corp., IPR2016-00608, Paper 14 (PTAB June 2, 2016). The Board granted authorization for petitioner to file a reply to patent owner’s preliminary response to address patent owner’s arguments and evidence that the challenged claims have an earlier date of invention than an asserted reference. The Board indicated that petitioner’s reply is limited to addressing patent owner’s arguments regarding its invention date.
Twilio Inc. v. Telesign Corp., IPR2016-00450, Paper 14 (PTAB June 3, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address whether the challenged patent is entitled to claim priority to an earlier application and whether petitioner could submit evidence that one of the asserted references is prior art to the priority application. The Board indicated that “[g]enerally, a petitioner is not authorized to file a reply to a patent owner preliminary response,” and that petitioner did not demonstrate that the Board should deviate from the normal procedure. The Board stated that it is “capable of applying the indicated facts to the indicated statutes, rules, and case law,” and was not persuaded that it would benefit from additional briefing or supplementation. With regard to petitioner’s request to submit new evidence, the Board indicated that petitioner could revisit the issue if institution is granted.
1964 Ears, LLC v. Jerry Harvey Audio Holdings, LLC, IPR2016-00494, Paper 20 (PTAB June 15, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s arguments in its preliminary response regarding real party-in-interest and secondary considerations of non-obviousness. Petitioner argued that it could not have addressed these arguments in its petition. The Board disagreed, indicating that the preliminary response is the first opportunity for patent owner to articulate anything. Thus, the fact that petitioner, when filing the petition, did not know about positions taken by patent owner in its preliminary response is nothing unexpected. The rules governing an inter partes review do not provide for filing a reply to a preliminary response. To justify filing such a reply, petitioner should present a special circumstance beyond the fact that Patent Owner’s Preliminary Response presented something “new,” to which petitioner has not had a chance to respond. The Board also noted that petitioner waiting six weeks until after the preliminary response was filed to request permission for the reply weighed in favor of denying authorization.
Samsung Elecs. Co., Ltd. v. Rosetta-Wireless Corp., IPR2016-00622, Paper 11 (PTAB June 15, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response in order to address claim term constructions that petitioner did not address in the petition. The Board disagreed with petitioner’s argument that patent owner’s proposed constructions were unforeseeable. The mere fact that patent owner seeks construction of a different set of claim terms, or that petitioner does not agree with patent owner’s arguments behind the proposed constructions of the different terms does not justify additional briefing. The Board also denied authorization for petitioner authorization to file a reply to further address a reference’s status as prior art. Under 37 C.F.R. § 42.1014(b)(2), petitioner was required to set forth in the petition the specific statutory grounds for its challenge. The fact that petitioner may now wish to respond to patent owner’s arguments regarding the prior art status of the reference—and to potentially augment the basis of its prior art showing— does not warrant additional briefing on this issue.
HP, Inc. v. Memjet Tech., Ltd., IPR2016-00537, Paper 8 (PTAB June 17, 2016). The Board granted petitioner authorization to file a reply to patent owner’s preliminary response to address patent owner’s argument that an asserted reference could not be used to challenge the patent under 35 U.S.C. § 103(c). Petitioner argued that patent owner’s evidence is insufficient to prove ownership of a priority application of the reference under Australian patent law, and that the Board would benefit from briefing on the Australian patent laws pertaining to the application for and ownership of patents. Under 37 C.F.R. § 42.62(d), the Board may, in determining an issue of foreign law, consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence. The Board agreed with petitioner that it would benefit from briefing by the parties on ownership of the priority application under Australian law. The Board permitted patent owner to file a sur-reply to petitioner’s reply to the preliminary response.
Coalition for Affordable Drugs VI, LLC v. Celgene Corp., IPR2015-01092, Paper 59 (PTAB June 24, 2016). The Board authorized patent owner to file a sur-reply to the petitioner reply to address three references that were discussed in the petitioner reply. Patent owner alleged that petitioner had not previously relied on the three references. The Board indicated that patent owner’s sur-reply was limited to addressing: (1) the alleged new issues raised in petitioner’s reply; and (2) antedating the references cited in petitioner’s reply. The Board authorized petitioner to file an opposition to patent owner’s sur-reply.
Realtime Data LLC v. Oracle Int’l Corp., IPR2016-00695, Paper 7 (PTAB June 24, 2016). The Board denied petitioner’s request to file a reply to patent owner’s preliminary response to address alleged inconsistencies in the testimony of patent owner’s declarant. Under the amendments to 37 C.F.R. § 42.108(c), petitioner may seek leave to file a reply to a preliminary response upon a showing of good cause. Petitioner’s sole showing is an allegation that the declarant’s prior statements are inconsistent with his declaration. Such a showing addresses the weight petitioner believes the Board should afford the declarant’s testimony, but does not justify permitting a reply at the pre-institution stage of the proceeding. Section 42.108(c) makes clear that at the pre-institution stage, any genuine issues of material fact that may be created by [the declarant’s] testimony are viewed in the light most favorable to petitioner. Thus, any disputed issues of fact will still be resolved in petitioner’s favor even if the allegations of inconsistencies in the testimony are true.
Xactware Sols., Inc. v. Eagle View Techs., Inc., IPR2015-00582, Paper 14 (PTAB June 30, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response. Petitioner alleged that the preliminary response contained misstatements of the facts, arguments made in the petition, and of the law relating to the public accessibility of prior art. The Board determined that good cause did not exist to justify permitting petitioner to file a reply. The Board indicated that “[g]ood cause may exist in certain situations such as where new evidence comes to light after the filing of a petition or a legal argument of first impression is made by the Patent Owner.” The Board indicated that it was not required to allow petitioner to identify new citations or bolster arguments in the petition. The Board stated that identifying and evaluating statements or misstatements of the facts and law are well within the Board’s purview. “It may always be the case that a Petitioner is unhappy with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner Reply only when good cause exists.”
Seabury N. Am., Inc. v. Lincoln Global, Inc., IPR2016-00749 (PTAB July 21, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address arguments concerning whether petitioner has sufficiently shown that two asserted references qualify as printed publications. Petitioner argued that it could not have reasonably anticipated that patent owner would challenge the printed publication status of the references because they were discussed during the prosecution history of the challenged patent. The Board determined that petitioner had not shown the required “good cause” to permit a reply. At the institution stage, petitioner has the burden to show a reasonable likelihood that it would prevail in its challenges. 35 U.S.C. § 314(a). Petitioner must make a threshold showing that the alleged prior art in its challenges are patents or printed publications.
Semiconductor Components Indus., LLC d/b/a On Semiconductor v. Power Integrations, Inc., IPR2016-00809, Paper 8 (PTAB July 29, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response. Petitioner sought to address the relevance of a non-precedential Board decision that contradicted patent owner’s argument concerning whether petitioner was time-barred based on its acquisition of a third party that was previously served with a complaint for infringement. The Board indicated that it was aware of the other Board decision and that it would address the parties’ positions on the issue in the institution decision. Petitioner also sought to address patent owner’s claim construction that petitioner characterized as a “surprise” because it was inconsistent with the claim construction agreed to by patent owner in the related litigation. The Board determined that it did not perceive “good cause” to address the claim construction. The Board was aware of the parties’ positions and would address them in the institution decision.
The Clorox Co. v. Auto-Kaps, LLC, IPR2016-00821, Paper 7 (PTAB Aug. 9, 2016). The Board denied authorization for petitioner to file a reply to the declaration testimony submitted with patent owner’s preliminary response. Petitioner argued that petitioner’s expert proposed an inappropriate claim construction for several terms of the patent by importing narrowing language without explanation as to where the constructions were supported. The Board indicated that petitioner did not show good cause to justify authorization of a reply. The Board assigns appropriate weight to expert testimony in accordance with 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).
Smith & Nephew, Inc. v. Arthrex, Inc., IPR2016-00917, Paper 9 (Aug. 4, 2016). The Board authorized petitioner to file a reply to patent owner’s preliminary response to address patent owner’s argument that the Board should not institute review and enter adverse judgment against patent owner in view of patent owner’s disclaimer of all challenged claims. Patent owner cited a prior Board decision and 37 C.F.R. 42.107 (“No inter partes review shall be instituted based on disclaimed claims.”) in support of its argument. Petitioner argued that entering adverse judgment rather than denying institution would clarify the estoppel effect of the disposition under 37 C.F.R. § 42.73(d)(3). The Board authorized petitioner to file a reply and for patent owner to file a sur-reply to aid in the Board’s analysis.
Instradent USA, Inc. v. Nobel Biocare Servs. AG, IPR2015-01786, Paper 57 (PTAB Aug. 16, 2016). The Board authorized patent owner to file a sur-reply to respond to alleged new arguments and evidence presented in petitioner’s reply regarding the public accessibility of an asserted reference, and and authorized both parties to file a two-page paper addressing whether an alleged new ground of anticipation and motivations/rationales to combine the prior art, and alleged new evidence to contradict patent owner’s secondary considerations evidence of copying are improper under 37 C.F.R. § 42.233(b). The Board rejected patent owner’s request to file a motion to strike the alleged new arguments and evidence, noting that, as recognized by the Federal Circuit in Genzyme Therapeutic Prods., the introduction of new evidence in the course of an IPR trial is to be expected, and as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is permissible. When issuing the final written decision, the Board will determine whether any of the alleged new arguments and evidence are improper under 37 C.F.R. § 42.233(b).
Dept. of Justice v. Discovery Patents, LLC, IPR2016-01035, Paper 8 (PTAB Sept. 9, 2016). The Board authorized petitioner to file a reply to patent owner’s preliminary response to address patent owner’s arguments that petitioner did not identify all real parties-in-interest in the petition. Patent owner argued that petitioner should have identified eight companies, each of which allegedly had a contract with the U.S. government that includes an indemnification clause. Petitioner explained that it seeks the opportunity to file a reply to address why a request to notice third parties in an action under 28 U.S.C. § 1498, such as the action before the Court of Federal Claims, does not support patent owner’s argument regarding identification of the real parties-in-interest.