Petioner’s Reply May Only Respond to the Patent Owner’s Arguments

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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, adn thus briefing from the parties is warranted to determine whether the reply arguments properly respond to Patent Owner‟s response.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.