Typically briefing in a PTAB proceeding runs the following course: Petition; Patent Owner Preliminary; Response; Patent Owner Response; and Petitioner Reply. This is the pattern where no amendments are presented by the Patent Owner. When a motion to amend is presented, the Patent Owner receives the last word on that motion.
Parties will often want an opportunity to get in the last word in briefing, especially when they feel that their opponent has presented new arguments or evidence in the last brief on the schedule. In such cases, a party can schedule a call with the Board to request leave to file a sur-reply, which the Board will sometimes grant when they find that a sur-reply is in the interest of justice. (Of note, in Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015), the Federal Circuit encouraged parties to take advantage of such sur-reply request opportunities.) The Board typically will not grant such requests when the arguments presented by the parties constitute typical” prior art and claim construction arguments. But, where the arguments are beyond “typical,” the PTAB will sometimes find a sur-reply is in the interest of justice and grant requests for short sur-replies, usually in the range of 1-5 pages.
The Conduct of the Proceedings Order in LG Electronics v. ATI Technologies illustrates such a situation where the Board granted the Patent Owner a 5 page sur-reply after the Petitioner Reply that normally would have ended briefing in the trial. In this case, Patent Owner ATI had presented evidence in its Patent Owner Response in an attempt to “swear behind” certain prior art references. LG countered with arguments and evidence in its Petitioner Reply. ATI requested a short sur-reply, which LG opposed. Patent Owner ATI argued that they had the burden of production on the reference antedating issue and should thus get the last word, and the Board agreed.
Other scenarios where sur-replies have been granted include:
- Patent Owner submitted new evidence with a Reply to its Motion to Terminate for failing to name all real parties in interest and Petitioner wanted to respond (GEA Process Engineering v. Steuben Foods, IPR2014-00041);
- Petitioner requested a Reply to the Patent Owner Preliminary Response, where the Patent Owner raised difficult 1-year bar arguments in the Preliminary Response (eBay v. Advanced Auctions, IPR2014-00806);
- Patent Owner requested a sur-reply to the Petitioner Reply regarding a reference antedating, similar to the LG v. ATI case (Neste Oil v. REG Synthetic Fuels, IPR2013-00578).
In contrast, requests for sur-replies have been denied in cases where:
- Patent Owner felt the Petitioner Reply went beyond the scope of the Patent Owner Response (Masterimage 3d v. RealID, IPR2015-00035);
- Patent Owner wanted to address claim construction arguments that they felt were new arguments in the Petitioner Reply (Xilinx v. PLL Technologies, IPR2015-00148).
In summary, opportunities for sur-replies are available and should be considered in the course of a trial. Getting the last word of an argument is often beneficial to one’s case. While the Board tends not to grant sur-replies when arguments follow the regular pattern, arguments out of the norm, such as swear behinds, and complex, important procedural issues, will sometimes motivate the Board to grant such requests. Because the Federal Circuit has criticized parties for not requesting a sur-reply, and then complaining to the Court, it is often best to ask for a sur-reply when there is a chance of it being granted, at least to show that one did not waive or otherwise not properly preserve positions for appeal.