On February 12, 2018, Patent Owner contacted the Board by e-mail requesting authorization to file a motion to strike Petitioner’s Reply in each proceeding.
Indeed, “a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).
For example, our Trial Practice Guide explains that “[e]xamples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.” Id. We decline at this time to exclude the reply submissions.
1 For purposes of this Order, an improper argument is an argument made by Petitioner in its Reply where (1) it is beyond the scope of a reply under 37 C.F.R. § 42.23(b) or (2) if we were to rely on it in finding the challenged claims unpatentable, Patent Owner would not have had sufficient notice and opportunity to respond (see, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).
Patent 8,275,827 B2 page and line numbers, and may include a brief explanation (akin to that in a motion for observation, see IPR2017-00374, Paper 12, 5).