Takeaway: The Board allowed Patent Owner to use a portion of its Reply to the Opposition to the Motion to Amend to address arguments made by Petitioner in its Reply to the Patent Owner Response regarding swearing behind of one of the references, because the argument applies to both the Motion to Amend and the original claims.

In its Order, the Board summarized a call regarding Patent Owner’s request for a sur-reply brief regarding the issue of the date of invention of one of the references relied on in the Petition. With its Patent Owner Response, Patent Owner included a declaration from the inventor of the ’804 Patent, “swearing behind” one of the references relied on in the Petition.

In the Reply to the Patent Owner’s Response, Petitioner contested Patent Owner’s attempt to swear behind the reference. Patent Owner highlighted arguments made by Petitioner that Patent Owner “could not have anticipated.” Therefore, Patent Owner argued that it could not have addressed these issues in its Patent Owner Response. Further, Patent Owner stated that it bears the burden of proof on the date of invention issue, and thus, should be given the last word. Petitioner opposed the request.

The Board clarified that Patent Owner does not bear the burden of proof to antedate a reference. While Patent Owner has the burden of production, Petitioner retains the ultimate burden of proof on the ultimate issue of unpatentability. The Board pointed out that Patent Owner does bear the burden of proof on whether its proposed amended claims are patentable. Thus, the Board stated that Patent Owner could include arguments regarding the invention date in its Reply to the Opposition to the Motion to Amend, and that the Board could consider the argument for the original claims as well. Therefore, the Board granted Patent Owner an additional two pages for its Reply to the Opposition to the Motion to Amend, in lieu of the requested sur-reply brief.

Patent Owner also requested to file a motion for observation on cross-examination of Petitioner’s witnesses with respect to the original claims. Motions for observation are a mechanism for a party to draw the Board’s attention to relevant cross-examination of a reply witness. Thus, the Board granted Patent Owner’s request with respect to the original claims, but not with respect to the date of invention issue.

Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578
Paper 29: Order on Conduct of Proceedings
Dated: September 9, 2014
Patents 8,231,804
Before: Rama G. Elluru, Sheridan K. Snedden, and Christopher L. Crumbley
Written by: Crumbley