Denying Motion to Strike IPR 2014-00153, 154

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Takeaway: In general, as long as Petitioner’s Reply is in response to arguments raised in Patent Owner’s Response, then it is within the scope of a Reply in accordance with 37 C.F.R. § 42.23.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to strike portions of Petitioners’ Reply and the accompanying declaration that accompanied the Reply.  The Board’s denial of this request applied to each of IPR2104-00153 and IPR2014-00154.

Patent Owner had sought authorization to file a motion to strike portions of Petitioners’ Reply, and the declaration testimony that accompanied the Reply, in each of IPR2104-00153 and IPR2014-00154.  In support of this request, Patent Owner contended that Petitioners had raised new issues and evidence in the Reply that Petitioners could have presented in the Petition, but did not.  Patent Owner took the position that it should be allowed to file the requested motion to strike as a matter of fundamental fairness; otherwise Patent Owner would not have the opportunity to respond to the new issues raised by Petitioner in the Reply.  Petitioner, in response, asserted that the alleged new issues were in fact raised in the Petition, and therefore were not actually new.

The Board denied Patent Owner’s request for authorization to file a motion to strike.  According to the Board, in accordance with 37 C.F.R. § 42.23, so long as the Reply responds to arguments set forth in Patent Owner’s response, then it is of a proper scope.  The Board went on to note that it “can determine for itself whether the Reply raises new issues or evidence that should have been submitted with the Petition, and can discount any such arguments accordingly.”

The Board further explained that “Patent Owner can file a motion for observations after the cross-examination of the declarant, and that it can note during the oral hearing which arguments and evidence it believes are new.”  This would allow Patent Owner to create a record notifying the Board of the issues and evidence which Patent Owner considers to be new.  In turn, the Board can then review each party’ papers and consider their positions to determine what weight, if any, to give the alleged new arguments and evidence at the time the Board issues its Final Written Decision.

Adobe Systems Incorporated and Level 3 Communications, LLC v. Afluo, LLC, IPR2014-00153 and IPR2014-00154
Paper 18 (IPR2014-00153) and Paper 21 (IPR2014-00154): Order on Conduct of the Proceedings

Dated: September 18, 2014
Patent 5,995,091
Before: Michael W. Kim, William V. Saindon, and Tina E. Hulse
Written by: Hulse