Expunging Unauthorized Sur-Reply IPR2013-00452


Takeaway: The Board may expunge papers filed without its authorization.

In its Order, the Board expunged Patent Owner’s unauthorized paper, which responded to Petitioner’s Reply to the Patent Owner Response. Patent Owner filed the paper to argue that Petitioner’s alleged prior art documents, which contained copyright notices, did not constitute prior art.

In its Patent Owner Response, Patent Owner argued that Petitioner “failed to authenticate the documents as prior art.” Petitioner responded that Patent Owner’s objection was invalid because Patent Owner did not dispute the admissibility of the documents within ten days of institution as 37 C.F.R. § 42.64(b)(1) requires. Patent Owner later clarified that its contention was that Petitioner’s documents do not constitute prior art, not that they are inadmissible.

Petitioner submitted a declaration supporting its documents, which Patent Owner alleged represented supplemental information under 37 C.F.R. § 42.123. That section requires the party wishing to submit supplemental information to file a motion requesting authorization. Because Petitioner did not file a motion, Patent Owner alleged that the declaration was unauthorized. The Board rejected Patent Owner’s characterization of the declaration as supplemental information, concluding instead that the declaration was directly responsive to the Patent Owner Response, and consequently not subject to the procedural requirements of § 42.123.

In support of its challenges to Petitioner’s alleged prior art documents, Patent Owner submitted a sur-reply to Petitioner’s Reply to the Patent Owner Response. The Board, however, had not authorized Patent Owner to file the sur-reply. Noting that its rules do not allow for a patent owner sur-reply to a petitioner’s reply, the Board expunged the unauthorized paper.

Autoquip, Inc. v. Graco Minnesota, Inc., IPR2013-00452
Paper 17: Order Expunging Unauthorized Paper
Dated: June 30, 2014
Patent 6,554,204
Before: Brian J. McNamara, Georgianna W. Braden, and Barbara A. Parvis
Written by: McNamara