In its Order, the Board explained the scope of Petitioner’s Reply and options for Patent Owner to respond to any declarations that may be filed with Petitioner’s Reply. Patent Owner believed that the declaration being offered by Petitioner was belatedly presenting new evidence that was in fact necessary for Petitioner’s case. Also, it was argued that Patent Owner would not have the opportunity to respond to new evidence in the declaration. Petitioner argued that the declarations merely responded to the claim construction argued by Patent Owner in its Response, and did not raise new issues.
The Board cautioned Petitioner that a reply raising new issues or belatedly new evidence will not be considered, and that the Board will not distinguish proper portions of the reply from improper portions. However, the Board also explained that Petitioner has the opportunity to provide one or more reply declarations necessitated by Patent Owner’s Response. Also, Patent Owner has the opportunity to respond to the reply declarations by filing observations on cross-examination. Also, Patent Owner can bring to the Board’s attention that the reply and declaration go beyond the scope of a proper reply during a requested conference call or at oral argument.
Ariosa Diagnostics v. The Board of Trusees of the Leland Standford Junior University, IPR2013-00308
Paper 20: Order on Conduct of the Proceeding
Dated: May 27, 2014
Patent 8,296,076 B2
Before: Lora M. Green, Rama G. Elluru, and Scott E. Kamholz
Written by: Green