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ARTICLE · 18 NOVEMBER 2021

PTAB Strikes Patent Owner Sur-Reply Exhibits

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The Patent Owner asserted that the new exhibits should not be considered new evidence, but as proper rebuttal evidence to what it deemed as new arguments made in Petitioner's Reply.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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Rule 42.23(b) is clear, "A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness."   In Satco Products, Inc. v. Seoul Semiconductor Co., LTD.,  (IPR2020-00836), the PTAB granted the Petitioner's motion to strike eight exhibits introduced by the Patent Owner's Sur-reply.  The Board agreed with the Petitioner that the introduction of the exhibits for the first time in the Patent Owner's Sur-reply represent new evidence and is therefore prohibited under 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide.  Additionally, the Board found that failure to include the exhibit would not prejudice the Patent Owner.

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