Takeaway: The Board will automatically consider whether a petitioner’s reply exceeds the proper scope when it prepares its final written decision, and patent owner should not file any papers arguing as such, but can raise the issue at the oral argument.

In its Order, the Board gave Patent Owner guidance on the proper way to challenge the scope of Petitioner’s Reply. The Board held a previous conference call on the issue and suggested that the parties attempt to resolve the dispute by considering whether any portions of the Response and/or Reply could be withdrawn.  The parties were unable to reach agreement, and Patent Owner requested guidance from the Board as to how to challenge the scope of the Reply.

The Board stated that it will determine the question of whether the scope of the Reply is proper when preparing the final written decision. Specifically, the Board did not authorize Patent Owner to file any sort of challenge at this time, stated that it is not a proper issue to raise in a motion to exclude, and stated that Patent Owner may address the issue at oral argument if it chooses.  The Board also cautioned the parties that a reply may only respond to arguments made in the corresponding opposition, and that if a reply raises new issues, the Board will not distinguish between the proper portions of the reply and the improper portions.  Therefore, should the Board determine that portions of a reply exceed the proper scope, the Board may give no consideration to the entire reply or any reply evidence.

Cyanotech Corporation v. The Board of Trustees of the University of Illinois, IPR2013-00401; IPR2013-00404 (consolidated)
Paper 44: Order on Conduct of the Proceeding
Dated: June 6, 2014
Patent 5,527,533
Before: Scott E. Kamholz and Georgianna W. Braden
Written by: Kamholz