In its final written decision, a PTAB panel granted a patent owner’s (owner) motion to exclude evidence submitted by a petitioner in support of its unpatentability positions. Under the AIA, “[a] reply may only respond to arguments raised in the corresponding opposition. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.” In its reply to the owner’s response, the petitioner submitted new test results designed to show that the claimed properties are inherently described in prior art compositions. The Board granted the owner’s motion to exclude those test results, explaining that “submission…of this ‘new’ evidence at the reply stage in this inter partes review strikes us as prejudicial to [the owner].” In holding that the submitted test results do more than merely address points made in the owner’s response, the Board found that the “new evidence sought to be ‘excluded’ relies on post-petition and post-patent owner response testing using a protocol different from that used for the testing offered with the petition.” After determining that this “new” evidence was not properly submitted and would be denied consideration, the Board ruled that the petitioner failed to show by a preponderance of the evidence that the challenged claims are unpatentable.
Corning Inc. v. DSM IP Assets B.V., IPR2013-00047 (PTAB May 1, 2014) [McKelvey (opinion), Obermann, Bisk, Kamholz, Yang]