The Continuing Problem of Replies Exceeding Their Proper Scope

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 27, and IPR2013-00277 (April 23, 2014), the Board again dealt with a patent owner’s motion to strike a petitioner’s reply that the patent owner believes exceeds the scope of petition.  The Board reminded patent owners that it determines whether a Reply and accompanying evidence are outside the scope of a proper Reply and evidence when the parties’ briefs are reviewed and the final written decision is prepared. If there are improper arguments and evidence presented with a Reply, the Board may strike portions or the entirety of the Reply and exclude related evidence. The Board said that it takes under consideration any alleged violations in due course, upon considering the record at the end of the trial.

The Board does not seem to understand that it is not fair to a patent owner not to know what issues are or are not in play at the Oral Hearing, which is why patent owners continue to try to file a motion to strike.

The Board points out that in addition to a motion to exclude, the patent owner can also cross-examine the petitioner’s witnesss, and file a motion for observation on cross-examination, but should a patent owner be put to these steps if the testimony is beyond the proper scope to begin with?

The issue arose a few days earlier in Microsoft Corporation v. Surfcast, Inc., IPR2013-00292 (April 21, 2014) where the patent owner sought permission to file a sur-reply to address what it beleived were improper evidence and arguments in petioner’s reply.  Again the Board said that it would exclude what should be excluded, but again this does not help the patent owner in the oral argument.

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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.