Denying Motion for Leave to File Motion to Strike Reply and Accompanying Evidence IPR2013-00236

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Takeaway: The Board will not grant leave to file a motion to strike a reply absent special circumstances. In the ordinary course, the Board will determine whether a reply exceeds the proper scope when preparing the final written decision, without a motion to strike being filed.

In its Order, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply and accompanying declaration. Patent Owner argued that Petitioner’s Reply and accompanying declaration improperly asserted a new claim interpretation, new grounds of unpatentability, and new arguments based on different portions of the asserted prior art references than those relied on in the Petition. A reply may only respond to arguments raised in the corresponding patent owner response, and reply evidence must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.

The Board did not authorize the filing of a motion to strike in this case, at least because such a motion is not, ordinarily, a proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the Rules. In the absence of special circumstance, a determination of whether a reply exceeds the proper scope is determined when preparing the final written decision. The Board determined that in this case, the matter will be decided after all substantive briefing is completed at the time of the final written decision.

Samsung Electronics Co., Ltd. v. Unifi Scientific Batteries, LLC, IPR2013-00236
Paper 34: Order on Conduct of the Proceeding
Dated: May 1, 2014
Patent 6,791,298 B2
Before: Michael R. Zecher, Justin T. Arbes, and Matthew R. Clements
Written by: Arbes