Addressing whether a patent owner may file a surreply brief in an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) granted the request, but limited the size of the surreply and the scope to an issue that first arose in petitioners reply brief. HTC Corp. v. NFC Technology, LLC, Case No. IPR2014-001198 (PTAB Nov. 19, 2015) (Arpin, APJ).

NFC sued HTC for patent infringement on two patents related to near field communication technology; HTC filed petitions for inter partes review against both patents. The Patent and Trademark Office (PTO) instituted the review proceedings and the district court stayed the litigation.

In one of its petitions, HTC relied on a prior art patent whose priority date was less than two months earlier than the patent under review. In response, the patent owner, NFC attempted to antedate the prior art patent by establishing an earlier reduction to practice. NFC’s response was accompanied by various exhibits, as well as declarations by the inventor and others who worked on his team.

The petitioner deposed all of the declarants except for one. The hold-out declarant resided in France and refused to travel to the U.S. for a deposition based on unspecified personal reasons. After the Board rejected patent owner’s offer of a videoconference deposition, the petitioner moved to strike that particular declaration. The Board interpreted its rules as requiring parties to make their declarants available for deposition in the United States and consequently granted the motion. The declaration was thus expunged from the record, and those portions of patent owner’s responsive brief that relied on the declaration were given no weight. The petitioner then filed its reply brief, which disputed the reduction to practice claim for, among other things, lack of corroboration.

The patent owner sought permission to file a surreply, arguing that, because it bore the burden of showing reduction to practice, it should be given the opportunity to respond to the arguments and evidence raised in the petitioner’s reply. The Board granted the motion, citing a Federal Circuit opinion that blessed such surreplies, as well as prior Board decisions that authorized surreplies in similar situations. However, the Board limited the surreply to a mere five pages and restricted its scope to only allow patent owner to address the petitioner’s arguments regarding the reduction to practice issue. The Board also barred the patent owner from introducing any new evidence or additional testimony along with its surreply.