In Toyota Motor Corp. v. Hagenbuch, the PTAB was presented with a novel procedural question regarding challenging the scope of the petitioner’s reply, which the Board resolved by creating what appears to be a new procedure. IPR2013-00638, Paper 31 (Oct. 16, 2014).
Every IPR trial will have at least three major filings:
- the petition, in which the petitioner should set forth all the evidence and arguments necessary to establish invalidity;
- the patent owner’s response, in which the patent owner presents its own evidence and arguments in favor of patentability; and
- the petitioner’s reply.
The scope of the petitioner’s reply is limited to responses to arguments raised in the patent owner’s response. 37 C.F.R. § 42.23(b).
However, nothing in the statutes or rules governing IPR provides a procedure by which the patent owner can challenge the scope of a petitioner’s reply.
In Toyota, the Patent Owner sought guidance from the Board regarding how to contend that the Petitioner’s reply exceeded the proper scope. In response, the Board set forth the following procedure:
- First, the patent owner files a one-page submission identifying aspects of the reply that it contends exceed the proper scope.
- Next, the petitioner files a one-page, point-by-point rebuttal identifying specific portions of the patent owner’s response that petitioner contends justify the material in the reply.
- No explanation, elaboration, or discussion is permitted in either submission.
This decision illustrates how PTAB panels have tended to handle new procedural issues as they arise: in teleconferences with the parties, panels come up with a workable procedure and memorialize it in a published decision. It is reasonable to expect that future panels will employ the same procedure.
This decision further serves as a reminder to petitioners that they should make their petition as complete as possible because patent owners will have the chance to object to replies that seek to introduce new evidence and argument beyond the scope allowed in replies.