Granting Authorization to File Motion to Strike Portions of Petitioner’s Reply IPR2013-00242

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Takeaway: Relying upon a different embodiment in a reply brief than was relied upon in the petition is not a permissible use of a reply brief.

In its Order, the Board authorized Patent Owner to file a motion to strike portions of Petitioner’s reply. The Patent Owner argued that Petitioner’s reply contained improper new arguments regarding one of the prior art references at issue in the proceeding. In particular, the Patent Owner argued that, in the reply, Petitioner relied on a different embodiment in the same prior art reference than was relied on in the Petition. The Patent Owner further urged that relying on a different embodiment in the same prior art reference is new evidence, and not properly responsive to arguments raised in the patent owner response. See 37 C.F.R. § 42.23(b) (a reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant‟s motion.”).

The Board agreed that relying on a different embodiment in a reply than was relied on in the petition is not permissible in a reply brief. The Board ordered additional briefing to determine if the reply arguments properly respond to the Patent Owner’s response, and what portions of the reply should be stricken.

Amkor Technology v. Tessera, Inc., IPR2013-00242
Paper 106: Order on Conduct of the Proceedings
Dated: March 27, 2014
Patent: 6,046,076
Before: Kevin F. Turner, Justin T. Arbes, and Carl M. DeFranco
Written by: Arbes