PTAB opportunity to respond. The Federal Circuit addressed the scope of reply in Berk-Tek and found the patent owner had waived the right to appeal the scope of petitioner’s reply by not pursuing all available procedural and extra-procedural remedies. In other words, parties must ask the board for every type of relief they seek or risk waiving any type of relief on that issue later. Available procedural remedies While no procedural remedy explicitly addresses how to challenge a reply for exceeding the proper scope, patent owners should still use the available procedural remedies available to full effect. These procedural remedies include objecting to evidence supporting the improper scope of reply and following through with a motion to exclude under 37 CFR § 42.64(a)-(c), taking all reply declarants depositions under 37 CFR § 42.51(b)(1) and filing observations on cross to set up the improper scope of reply, and raising the improper scope of reply at oral argument.13 “If a petitioner does not present all the necessary evidence to support its invalidity grounds and foreseeable alternative arguments, it risks waiving the ability to raise those issues later.” Available extra-procedural remedies As shown by the Federal Circuit’s decision in Berk-Tek, patent owners cannot stop at the procedural remedies for addressing the improper scope of a reply.

Patent owners must ask the PTAB for additional relief in order to preserve its due process and procedural rights. The trial rules provide that “the board may waive or suspend a requirement…and may place conditions on the waiver or suspension”. The Federal Circuit applied this provision of the board’s rules in Berk-Tek to mean that if the patent owner believes a reply includes improper new evidence and argument they can seek relief – such as asking the PTAB for permission to file a motion to exclude or a surreply and rebuttal evidence – even though there is no provision for such in the rules. According to Berk-Tek, patent owners may need to ask the board for relief that will be denied in order to preserve issues on appeal.

An example of relief that patent owners can seek that will likely be denied is leave to submit a surreply and a supplemental expert declaration. Seeking to submit a supplemental expert declaration is likely to be denied because it risks delaying the proceeding and pushing the final www.intellectualpropertymagazine.com written decision past the statutory one-year mark by triggering the mandatory discovery rules. Summary The PTAB has generally been addressing the scope of replies in three ways. First, it allows the patent owner short, non-argumentative observations to point out the alleged new argument and evidence.14 Secondly, by allowing the patent owner to submit observations on crossexamination of reply declarants;15 and thirdly by inviting the parties to address the new arguments at oral hearing. The PTAB will then address the scope of the reply in the final written decision.

In some instances, the board has granted patent owners surreplies. The results of patent owner challenges to the scope of replies have been mixed. Where the PTAB finds the challenged claims unpatentable, the board generally finds the scope of reply moot because it is either not relied on or unnecessary for the board’s decision.16 Where the PTAB finds claims not unpatentable, it generally refuses to consider the reply as untimely and finds that even if the reply were considered, it was insufficient to show unpatentability.17 The past four years of Patent Office post-grant proceedings demonstrate that if you don’t make all your arguments and seek all available relief from the PTAB, you have likely waived your ability to raise those arguments and to seek any relief on those issues later. Footnotes 1.  ___, 2015 WL 6756451, at *14, (Fed Cir 5 Nov 2015). F3d 2.  710 F3d 1318, 1327-28 (Fed Cir 2013). 3.  ickinson v Zurko, 527 US150, 165 (1999). D 4. Berk-Tek LLC, 2015 WL 6756451, at *12 (citing 5 USC §§554, 556). 5.  riosa Diagnostics v Verinata Health, Inc, __ F3d __, No 2015-1215, slip op A at 15 (Fed Cir 16 Nov 2015). 6. In re DBC, 545 Fed Cir 1373, 1378-79 (Fed Cir 2008). 7.  678 F3d 1357, 1362 (Fed Cir 2012). 8.  CFR §§ 42.22; 42.23(b); 42.104, 42.204, 42.304 ; Ariosa, slip op at 15; 37 ZTE Corp v Contentguard Holdings Inc, IPR2103-00139, Paper 27 at 2-3 (PTAB 30 July 2013). 9.  Alto Networks, Inc v Juniper Network, Inc, IPR2013-00369, Paper 37 Palo (PTAB 5vFeb 2014). 10.  Tech Commc’ns v Spherix Inc, IPR2014-01431, Paper 21 at 3 (PTAB 7 April V 2015). 11. PR2013-00106, Paper 35 at 4-5 (PTAB 11 Sept 2013), aff’d __ F 3d __, No. I 2015-1047 (Fed Cir 31 Dec 2015). 12.  axter Healthcare Corp v Millenium Biologix, LLC, IPR2013-00582, Paper 39 B (PTAB 30 Oct 2014). 13.  anon v Intellectual Ventures II LLC, IPR2014-00631, Paper 37 at 4 (PTAB 25 C March 2015). 14.  ilicon Labs, Inc v Cresta Tech Corp, IPR2015-00615, Paper 26 at 3 (PTAB 29 S Feb 2016). 15. (Canon, IPR2014-00631, Paper 37 at 4). 16. See Facebook, IPR2013-00478, Paper 58 at 37-38; Canon, IPR201400631,Paper 50 at 45-46. 17. Baxter Healthcare, IPR2013-00582, Paper 39 at 3-5. April 2016 Authors Wayne Stacy (left) is a partner and Britton Davis (right) is an associate at Cooley. Intellectual Property Magazine 39 .