PTAB judges continually impress me with their scrupulous fairness. I noticed it every day of my service as an administrative patent judge and every day since. Here’s a great example of that careful attention.
The party with the burden of proof argues last, right? Well, mostly right. In IPR’s (and PGR’s and CBM’s), the Petitioner bears the ultimate burden to prove a proposition of unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). That means the Petitioner usually gets to go last, both in briefing (Petitioner’s Reply) and in oral argument (Petitioner’s Rebuttal). One common exception occurs when the Patent Owner moves to amend the claims. The Patent Owner bears the burden to prove patentability and gets to argue last on that issue.
But even when the only issue in the case is unpatentability of issued claims, the Patent Owner may carry a burden that entitles it to have the last word. Can you think of one? Spoiler alert ahead!
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One example is antedating a reference. HTC America v. NFC Technology LLC (IPR2014-01198, Paper 45) illustrates it nicely. The Patent Owner sought to antedate a prior-art reference by proving an actual reduction to practice. The Patent Owner put on its antedating case in the Patent Owner Response, and the Petitioner opposed that argument in its Reply. The Patent Owner then requested authorization to file a Sur-Reply limited to the antedating issue. The Board granted this request (though for only 5 pages). In doing so, the Board recognized that the Patent Owner carries the burden of going forward with evidence on this issue, even though the ultimate burden of proof lies on the Petitioner. The Board did not, however, permit the Patent Owner to introduce rebuttal testimony or other new evidence with the Sur-Reply.
Another instance of a Sur-Reply for the Patent Owner occurs in Nintendo of America Inc. v. iLife Techs, Inc., IPR2015-00106 (Paper 25). In that case, the Board granted the Patent Owner leave to file a 4-page Sur-Reply addressing specific issues of claim construction. The Board explained only that it was persuaded that the additional briefing would be helpful to the panel in rendering the final written decision.
And don’t forget about the oral argument. If the Board grants a party a Sur-Reply, it’s worth that party asking for a corresponding Sur-Rebuttal during the hearing.
The moral of this story is: appeal to the Board’s sense of fairness. Articulate a good reason why fairness demands a particular modification to the procedure, and there’s a reasonable chance the Board will grant at least part of the relief requested.