Written by Stuart Nelson
In post-grant proceedings, one issue that commonly arises is what evidence is permissible to file with replies. In Berk-Tec LLC v. Belden Technologies Inc. (IPR2013-00057), the Patent Trial and Appeal Board discussed the issue of a new reply declaration and 19 exhibits being filed by a petitioner that filed no declaration with the initial petition. Order, Sept. 10, 2013, p. 1-2. The Board refused to decide the issue on a conference call, explaining that "a trial within a trial will not be held." Id. at 2. The Board also explained that "it is not the test for determining appropriateness of a Reply merely to see whether information was previously available to Berk-Tek and could have been submitted with its Petition," but rather:
“Much of the analysis centers on the scope and content of Belden's Patent Owner Response, in addition to whether the issue was one Berk-Tek sufficiently addressed without a supporting declaration in its Petition. It also would be unreasonable to expect a Petitioner to submit supporting testimony for every matter that possibly may be involved in a dispute. On the other hand, factual disputes which reasonably should have been anticipated may require supporting testimony.”
Id. at 2. The Board said that the patent owner is free to cross-examine the reply declarants as routine discovery and file observations, but that that Board would consider the matter only in its final decision. Id. at 2-3. The Board did eventually consider the declaration in its final decision, and concluded that the declaration was properly responsive to arguments raised in the petitioner's response. Final Decision, Mar. 18, 2013, p. 43-46.
Similarly, in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co. (CBM2012-00002) the Board also addressed what evidence is permissible to file with replies. Order, Sept. 3, 2013, p. 2-3. The Board explained that it is possible that the petitioner's reply is inappropriate, but explained a few points worth noting:
“(1) the standard for determining whether a Reply is appropriate is not whether an argument contained therein or evidence submitted therewith "could have been" submitted in the original petition;
(2) the Board already determined it is more likely than not that Petitioner would prevail on one or more grounds of alleged unpatentability; thus, it is generally less likely than in the case of a motion which has not yet been reviewed by the Board that Petitioner in its initial petition did not make out a prima facie case and needs to rely on its reply to do so;
(3) by standard procedure, the Petitioner has the last word with regard to the petition and it would not be unusual that one or more reply declarations may be necessitated by the arguments and evidence presented with the Patent Owner Response;
(4) a petitioner reasonably cannot anticipate in advance everything that may be presented in a Patent Owner Response; and
(5) the mere fact that Petitioner did not rely on declarations of Ms. O'Neal and Mr. Andrews in the initial petition does not mean automatically that Petitioner may not rely on testimony of those declarants to support its Reply.”
Id. at 2. The Board again noted the opportunity to cross-examine reply declarants and file observations. Id. at 3. The Board also eventually considered the reply declaration in its Final Decision in this case, and concluded that the patent owner did not show that the reply declaration exceeds the proper scope of reply evidence. Final Decision, Jan. 23, 2014, p. 61-69.
However, in a recent decision in Veeam Software v. Symantec Corporation (IPR2013-00141, IPR2013-00142, IPR2013-00143, IPR2013-00150), the Board struck and expunged new declarations filed with a Reply. Order, April 7, 2014, at p. 3-5. This case involved declarations supporting a patent owner's reply on its motion to amend. Id. at 3. The Board concluded that the patent owner "filed replies that go beyond the permissible scope," reasoning as follows: "These declarations are not limited to responding to arguments raised by Petitioner's opposition. Instead, they raise new issues and provide additional evidence that could have been provided in the original motion to amend." Id. at 4. The Board then struck and expunged the offending declarations, but did allow five days to submit substitutes that "are limited to addressing points specifically raised by Patent Owner in its oppositions that were not previously addressed and not foreseeable to Patent Owner when it filed its motions to amend." Id. at 6.
Ultimately, there has been no per se rule against submitting new evidence and declarations with a reply. However, parties will want to be careful not to exceed the scope of the other party's response or there will be a risk of the declaration being stricken in its entirety.