First Impressions – Parties Must Make Their Cases In Their Initial Briefs

In In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 56 (Sept. 3, 2020), the Board reaffirmed that the grounds for unpatentability and the evidence supporting those grounds must be provided in the Petition itself, and that new arguments may not be raised in a party's sur-reply brief.  Specifically, the Board denied the Petitioner's motion to supplement its expert declaration after institution with additional testimony regarding reasons to combine, and refused to consider the Patent Owner's additional argument, raised for the first time in its Sur-Reply, distinguishing the cited prior art reference.

Petitioners, In-Depth Geophysical, Inc. and In-Depth Compressive Seismic, Inc. filed a Petition requesting inter partes  review of claims 1-17 of U.S. Patent No. 9,846,248, directed to methods of acquiring seismic data. Following an oral hearing held on June 9, 2020, the final Written Decision held that the Petitioner had shown by a preponderance of