When faced with the issue of whether a reply brief contains new evidence, the PTAB has, to date, mostly punted on the issue – waiting until the Final Written Decision to assess the issue, when it is much more familiar with the record of the proceeding. Deviating from that path in Amkor Technology, Inc. v. Tessera, Inc., (IPR2013-00242), the Board granted Patent Owner’s Motion to Strike, finding that Patent Challenger had improperly raised new arguments in its reply brief.
In that reply, Patent Challenger relied on a different embodiment described in a prior art reference than that upon which it had relied in the initial Petition. The reply went on to argue obviousness of the challenged patent in view of this different embodiment. By switching its argument to the new embodiment, however, Patent Challenger was essentially introducing new supporting evidence that could have been presented in the original Petition. The Board found that this violated Rule 37 CFR § 42.24(b), which stipulates that the Patent Owner’s reply may only be responsive to Patent Owner’s response. Patent Challenger admitted its fault by explicitly stating that the second, newly-introduced embodiment was more relevant to the obviousness argument.
Accordingly, the Board allowed the motion to strike and directed Patent Owner to cite which portions of Patent Challenger’s reply should be stricken from the record.