In Amkor Technology, Inc. Tessera, Inc. IPR2013-00242, Paper 106 (March 27, 2014) the Board authorized the patent owner to file a Motion to Strike the petitioner’s reply on the grounds that it contained new matter. A reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012).
The Board found that the patent owner has made a threshold showing that petitioner in its reply is relying on a different embodiment of the reference from that which was relied on in the petition, and thus briefing from the parties is warranted to determine whether the reply arguments properly respond to Patent Owner?s response.