PTAB Strikes Patent Owner Sur-Reply Exhibits, PTAB Litigation Blog

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Rule 42.23(b) is clear, “A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”   In Satco Products, Inc. v. Seoul Semiconductor Co., LTD., (IPR2020-00836), the PTAB granted the Petitioner’s motion to strike eight exhibits introduced by the Patent Owner’s Sur-reply.  The Board agreed with the Petitioner that the introduction of the exhibits for the first time in the Patent Owner’s Sur-reply represent new evidence and is therefore prohibited under 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide.  Additionally, the Board found that failure to include the exhibit would not prejudice the Patent Owner.

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