Typically the party with the burden of proof has the final
opportunity to argue in an IPR. In most situations, this
means the Petitioner, as the party bearing the ultimate burden of
proving unpatentability, is afforded the last word. This is
true during the initial briefings where the Petitioner argues last
with their Petitioner’s reply to Patent Owner’s
response. This is also true later during the oral hearings
where the Petitioner is allowed to reserve time for
One instance during the IPR where the Patent Owner argues last
is with a motion to amend, where the Patent Owner is given the
opportunity to argue last because it carries the burden of proving
patentability of the amended claims.
In more limiting circumstances, the Board has allowed a Patent
Owner to argue last with respect to a specific issue raised by the
Patent Owner by way of a sur-reply. For example, the Board
has allowed Patent Owners to file sur-replies to address questions
regarding the dating of prior art references.
In IPR2014-01198 (HTC America v. NFC Technology), the
Patent Owner argued that it antedated a prior art reference.
(IPR2014-01198, Paper 45 p. 10). As expected, the Petitioner
responded to the antedating arguments in its Reply.
(Id. Paper 42 pp. 7-10). Under these circumstances,
the Board allowed the Patent Owner to file a sur-reply to
specifically address arguments on antedating because the Patent
Owner had the burden of showing reduction to practice.
(Id., Paper 45 pp. 3-5).
More recently, in IPR2015-01227 the Patent Owner challenged
whether a prior art reference was entitled to a provisional
application filing date as prior art under 102(e) (IPR2015-01227,
Paper 38 pp. 44-53). The Patent Owner also argued that its
patented invention antedated the prior art filing date.
(Id. Paper 38 pp. 53-60). The Board, however, did
not initially recognize the Patent Owner’s burden to prove
reduction to practice for antedating a prior art reference, and
denied the Patent Owner’s request to file a sur-reply
following the Petitioner’s Reply. Following Oral
Arguments, the Board acknowledged it was improper to deny the
Patent Owner’s request to file a sur-reply on this issue of
antedating the prior art reference1 (Id., Paper
61 pp. 2-3). Therefore, the Board allowed the Patent Owner to
file their sur-reply, after Oral Arguments, on these issues related
to antedating the prior art reference.
1. Based in part on the Federal Circuit’s decision
in Dynamic Drinkware, LLC, v. National Graphics, Inc., 800
F.3d 1375 (Fed. Circ. 2015) that was decided during the IPR
proceedings. The Federal Circuit in Dynamic
Drinkware held a “reference patent is only entitled to
claim the benefit of the filing date of its provisional application
if the disclosure of the provisional application provides support
for the claims in the reference patent in compliance with [35
U.S.C.] § 112, ¶ 1” (800 F.3d at
This article is intended to provide information of general
interest to the public and is not intended to offer legal advice
about specific situations or problems. Brinks Gilson & Lione
does not intend to create an attorney-client relationship by
offering this information and review of the information shall not
be deemed to create such a relationship. You should consult a
lawyer if you have a legal matter requiring attention. For further
information, please contact a Brinks Gilson & Lione
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