A reply brief submitted during inter partes review proceedings can be ignored in its entirety if any portion thereof includes new arguments raised for the first time. Here, for example, a reply brief including arguments not in response to those raised in the corresponding opposition or patent owner response was found to be improper per se and summarily dismissed without consideration. “As the Board noted, ‘it will not attempt to sort proper from improper portions of the reply.’” It may therefore be best to ensure that any reply to an inter partes review opposition or patent owner response includes no new arguments.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to a method of labeling nucleotides in a deoxyribonucleic acid (“DNA”) strand. In reaching its decision, the PTO refused to consider the petitioner’s reply brief and accompanying expert declaration because it found that the reply was improper. According to the PTO, at least a portion of the reply brief violated 37 C.F.R. § 42.23(b), which provides that a “reply may only respond to arguments raised in the corresponding opposition or patent owner response.”
Issue(s): Whether a reply brief submitted during inter partes review proceedings at the PTO can be wholly ignored when it includes any new arguments not in response to those raised in the corresponding opposition or patent owner response.
Holding(s): Yes. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ … Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper. As the Board noted, ‘it will not attempt to sort proper from improper portions of the reply.’ … [T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute. While the Board’s requirements are strict ones, they are requirements of which petitioners are aware when they seek to institute an IPR.”