Sur-Replies Can Be Permitted in Post-Grant Proceedings


Written by Stuart Nelson

Recently in Apple Inc. v. Sightsound Tech., LLC, the Board authorized the patent owner to file a sur-reply to address an obviousness ground raised for the first time in petitioner's reply. CBM2013-00020, Paper 100 at 2. In another case this month, Amneal Pharm., LLC v. Endo Pharm. Inc., the Board authorized both a reply and a sur-reply to address allegations in the preliminary response of a time-barred petition under 35 U.S.C. ¶ 315(b). IPR2014-00360, Paper 9 at 2-3. These cases show that the normal procedure of not allowing sur-replies in post grant proceedings can be changed under certain circumstances. This is not, however, expected to become the norm.

For more information, contact Stuart Nelson or another member of Fish’s post-grant practice.