Order Authorizing Motion for Observations and Denying Motion to Strike IPR2013-00323

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Takeaway: Although generally a Petitioner’s Reply may not present new arguments, Petitioner’s Reply may appropriately include arguments that are responsive to positions taken in the Patent Owner Response.

In its Order, the Board authorized Patent Owner to file a motion for observations on cross-examination of Petitioner’s reply declarant.  Petitioner did not oppose this authorization.  At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations.

Also, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply. In this connection, Patent Owner provided three assertions in support of Patent Owner’s position that Petitioner’s Reply presented new arguments and, therefore, exceeded the proper scope of a reply.

Patent Owner’s first assertion was that footnote 1 at page 5 of Petitioner’s Reply constituted a new challenge to the claims based on a ground of unpatentability that had not been asserted in the Petition. Footnote 1 stated: “If § 120 is not satisfied, then the Patent Owner is admitting that the ‘829 Patent anticipates and invalidates the claims under 35 U.S.C. § 102(a), (b), and (e).”  Petitioner, in reply, argued that this was not a new argument because no relief based on this statement had been requested, and Petitioner’s Reply had not attempted to apply any challenged claim to the teaching of the ‘829 Patent.  The Board sided with Petitioner on this issue, indicating that it would not be applying any new ground of unpatentability over the prior art that had not been raised in the Petition.  The parties were authorized to file a joint statement summarizing their dispute over this issue if Patent Owner remained unsatisfied, and the Board indicated that this issue would be revisited at the time of writing of the final written decision (although no additional briefing was authorized).

Patent Owner’s second assertion was that since the Board’s Decision instituting trial had already determined that Patent Owner was entitled to a claim for priority to an earlier ‘264 Patent, Petitioner should not be able to argue in its Reply that Patent Owner is not entitled to claim priority to a ‘713 patent having the same disclosure as the ‘264 patent. The Board responded by noting that the Decision instituting trial is a preliminary (not final) determination, and that by Patent Owner claiming priority to an application having an even earlier date than the ‘264 patent, the door had been opened for Petitioner to argue in its Reply why Patent Owner is not entitled to the filing date of any intermediate application in the chain leading back to the earlier application to which benefit was claimed in the Patent Owner Response.  As with the first assertion, the parties were authorized to file a joint statement summarizing their dispute over this issue, with the Board indicating that this issue would be reviewed at the time of writing of the final written decision (no additional briefing was authorized).

Patent Owner’s third assertion was that Petitioner’s Reply had set forth a new motivation for combining references in support of an obviousness position. Nonetheless, the Board sided with Petitioner on this issue because Petitioner’s statements were found by the Board to be responsive to points raised in the Patent Owner Response.

Having agreed with Petitioner on each of Patent Owner’s three assertions, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply.

Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323
Paper 33: Order on Conduct of the Proceedings

Dated: June 4, 2014

Patent 7,783,299

Before: Jameson Lee and Joni Y. Chang
Written By: Lee