Neste Oil Oyj v. REG Synthetic Fuels, LLC

In an order addressing a motion for a sur-reply to introduce evidence to antedate a prior art reference in an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) denied the patent owner’s request to file a sur-reply brief regarding the date of invention, but granted the patent owner an additional two pages to address the argument in its reply in further support of its motion to amend in lieu of the requested sur-reply.  Neste Oil Oyj v. REG Synthetic Fuels, LLC, Case No. IPR2013-00578 (PTAB, Sept. 9, 2014) (Crumbley, APJ).

Patent owner REG requested a conference call to seek authorization to file a sur-reply brief on the issue of the date of the invention of the patent at issue.  During the conference call, REG argued that it could not have anticipated the arguments raised in the petitioner’s reply to the patent owner’s response.  REG also argued that it bore the burden of proof regarding the date of invention of the patent at issue and was therefore entitled to the last word on the issue. 

The Board disagreed that REG bore the burden of establishing invention date, noting that while the burden of production with respect to antedating a reference rested with REG, the ultimate burden of proof on the issue of proving that the claims of the patent were unpatentable remained with petitioner.  REG received its relief, however, in a slightly different form.  Noting that the ultimate burden of proof as to the patentability of the amended claims rested with REG, the Board granted REG an additional two pages for its reply to the opposition to the motion to amend.  This grant of relief came with the caveat, however, that REG could not attempt to make arguments or establish facts that it could have raised in its opening brief.