More on What to do when a Reply Exceeds its Proper Scope

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In Texas Instruments Incorporated, v. Unifi Scientific Batteries, LLC, IPR2013-00213, Paper 27 (April 17, 2014), the Board said that:

A motion to strike is not, ordinarily, a proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules.

The Board explained that in the absence of special circumstance, the Board determines whether a reply and supporting evidence contain material exceeding the proper scope when it reviews all of the pertinent papers and prepare the final written decision. The Board may exclude all or portions of Petitioner’s reply and newly submitted evidence, or decline to consider any improper argument and related evidence, at that time.

This is consistent with the advice the Board gave a week earlier in in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), where the Board said that if an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.  At least this way the party can alert the Board to the issue.

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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.