In Johnson Health Tech Co. LTD v. Icon Health and Fitness, Inc., the PTAB authorized the Petitioner to file a Reply to the Patent Owner’s Preliminary Response in an IPR proceeding. IPR2014-01242, Paper 12 (November 28, 2014).

35 U.S.C. § 313 provides that, if an IPR Petition is filed under 35 U.S.C. 311, the Patent Owner has the right to file a Preliminary Response to the Petition that sets forth reasons why no IPR should be instituted based upon the failure of the Petition to meet any requirement of chapter 31 of title 35, United States Code. The Rules set forth at 37 C.F.R. § 42.107 provide the procedure under which the Patent Owner may file a Preliminary Response. Notably, however, there is no provision for a Petitioner’s Reply to the Patent Owner’s Preliminary Response under either the Patent Statute or the Rules.

In response to a comment during the rule-making process that a Petitioner should have a right to reply to the Preliminary Response, the USPTO stated that “[t]he statutes provide for only a petition and a patent owner preliminary response prior to institution” and that “[a]llowing a reply as a matter of right would negatively impact the ability of the Office to meet the time requirements of 35 U.S.C. 314(b), as amended, and 35 U.S.C. 324(c).”  77 Fed. Reg. 48702, Comment 54 (Aug. 14, 2012).

In its Preliminary Response, the Patent Owner asserted that the Petitioner was time-barred under the 1 year litigation statute of limitations of 35 U.S.C. § 315(b). After the Petitioner requested authorization to file a Reply to the Preliminary Response, the PTAB decided that “[b]ecause the statutory bar of 35 U.S.C. § 315(b) is a threshold issue, and because we determine that a Reply would be useful in deciding the issue in this case, we grant Petitioner’s request to file a Reply addressing the § 315(b) issues raised in the Preliminary Response.”  The PTAB limited the Reply to no longer than 10 pages and gave the Petitioner only 1 week to file the Reply, presumably to meet the requirement under 35 U.S.C. § 314(b) that the institution decision be rendered within 3 months after the filing of the Preliminary Response.

As this decision shows, it appears that where there is an issue as to the facts for establishing a threshold issue in an IPR, the PTAB is receptive to having the facts presented for deciding the issue, even if that means authorizing a brief that is not provided for in the Patent Statute or Rules.

Some additional lessons learned from this decision include:

  • where a paper is not expressly authorized, nor expressly prohibited, seeking PTAB authorization to file a paper may be fruitful where the situation warrants; and
  • a request for leave to file such a paper should establish the conflict in the facts regarding the threshold issue, be narrowly tailored to address the conflict, and allow for submission and consideration by the PTAB without impairing the PTAB’s ability to render a decision within the applicable statutory deadline.