Deposition Exhibits Allowed With Sur-Replies (Sometimes), PTAB Litigation Blog

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Under the Board’s rules, a patent owner gets to have the last word in a PTAB proceeding by filing a sur-reply to the petitioner’s reply.  Sur-replies may only respond to arguments raised in the reply, and the “sur-reply … may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”  37 C.F.R. § 42.23(b).  Recent decisions by PTAB panels have clarified the conditions under which a patent owner may submit exhibits that were introduced at deposition with a sur-reply.

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