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ARTICLE · 26 NOVEMBER 2015

Just How "New" Can New Reply Evidence Be?

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The Patent Owner argued to the Board that Petitioner's new argument and evidence concerning the corrected platinum mass exceeded the permissible scope of a Reply.

United StatesIntellectual Property
Lucas Watkins
Lucas Watkins
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The proper reliance on new evidence in a Reply is a common issue at the patent office. The Board in Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555 (Paper 36), recently authorized briefing on whether the Petitioner had properly relied on new evidence in its Reply:

New issues raised in a reply have been, and continue to be, a problem in IPR cases. Belated presentation of reply evidence can be prejudicial to a patent owner. On the other hand, patent owners have too often cried foul when evidence is properly relied upon in a reply. In a reply, a petitioner legitimately may respond to arguments made in an opposition. To do so, often it is necessary to rely on (1) evidence already cited in a petition or (2) new evidence. A motion to supplement is not necessary if evidence relied upon in a reply is limited to responding to arguments made in an opposition. Furthermore in a petition, a petitioner does not have to anticipate all possible arguments

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