In its Decision, the Board denied Patent Owner’s Motion to Strike various portions of the “Reply to Patent Owner Response.” Patent Owner argued that Petitioner’s reply went beyond the proper scope permitted for a reply. In particular, Patent Owner objected to (1) Petitioner’s belated reliance on a second embodiment in one of the asserted prior references; (2) Petitioner’s belated reliance on a claim for the first time in the asserted prior reference; (3) Petitioner’s reliance on a new prior art reference; and (4) Petitioner’s discussion of a new obviousness ground.
The Board found that Petitioner and Patent Owner had previously relied on more than one embodiment of the asserted prior reference. The Board found that Petitioner’s reference to a claim in the asserted prior reference for the first time was properly relied on to rebut Patent Owner’s characterization of a particular teaching in the asserted prior reference that had been relied on in the Petition. The Board found that Patent Owner was the one that raised the new prior art reference. The Board found that Petitioner did raise a new obviousness ground, but the entire reply did not need to be struck, because the Board is capable of discerning between proper discussion of the ground of anticipation at issue in the trial and any statements as to the obviousness ground not at issue. Based on the above findings, the Board denied Patent Owner’s Motion to Strike portions of the Reply to Patent Owner Response.
Amkor Technology Inc. v. Tessera, Inc., IPR2013-00242
Paper 122: Decision on Patent Owner’s Motion to Strike
Dated: April 22, 2014
Patent: 6,046,076
Before: Kevin F. Turner, Justin T. Arbes, and Carl M. DeFranco
Written by: DeFranco