Takeaway: In light of Director Lee’s Posting announcing upcoming changes to PTAB rules, the Board may permit petitioners 25 pages, instead of 15, to reply to a patent owner’s Response.

In its Decision, the Board granted Petitioner’s request for an additional ten pages for its Reply to Patent Owner’s Response.

The Board noted that Petitioner’s request is consistent with USPTO Director Lee’s Posting on March 27, 2015.

Patent Owner opposed Petitioner’s request. It argued that no additional pages would be necessary because (1) Petitioner filed multiple Petitions challenging each of its patents, (2) the IPRs at issue involve overlapping issues, and (3) Petitioner may file a Response to Observation in each proceeding.

The Board, however, noted that each IPR “involves different claims, addressing different substantive issues.” In addition, Petitioner may not file a Response to a Motion for Observation if Patent Owner does not file a Motion for Observation, and any response would be limited to the issues raised in the Motion. Moreover, the Board recognized that “as indicated in the Director’s Posting, fifteen (15) pages for a Reply is not a commensurate number of pages to respond to a sixty-page (60) Patent Owner’s Response.”

The Board was not persuaded by Patent Owner’s argument that a ten-page extension is not necessary and granted the Request.

Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00781
Paper 42: Order Granting Petitioner’s Request for a Ten-Page Extension 

Dated: April 14, 2015
Before: Kevin F. Turner, Debra k. Stephens, Joni Y. Chang, Susan L.C. Mitchell, and Jennifer M. Meyer
Written by: Chang