Takeaway: A patent owner may be allowed to file a sur-reply with additional declaration evidence in response to a position that was fully developed in petitioner’s reply, but generally raised in the original petition.

In its Decision, the Board granted Patent Owner the opportunity to file a sur-reply. The sur-reply is limited to responding to the arguments made by Petitioner in its papers and at the hearing that the challenged claims would have been obvious over the CompuSonics publications. Patent Owner may, if necessary, submit new declaration testimony with its sur-reply. Should Patent Owner do so, Petitioner is authorized to cross-examine the witness(es) and file a motion for observation on cross-examination to alert the Board to any relevant testimony.

The Petition included a very brief argument regarding obviousness over the CompuSonics publications. In its Reply to Patent Owner’s Response, Petitioner filed more detailed arguments regarding the obviousness position. Patent Owner was unable to have the arguments struck for bringing up new issues, but the Board authorized a sur-reply, and a chance to provide counter evidence.

Apple, Inc. v. Sightsound Technologies, LLC, CBM2013-00020; CBM2013-00023
Paper 100: Order on Conduct of the Proceedings
Dated: May 15, 2014
Patent 5,191,573; 5,966,440
Before: Michael P. Tierney, Justin T. Arbes, and Georgianna W. Braden
Written by: Arbes