Jimmie V. Reyna

IPR Reply Briefs: Drawing the Line Between “Responsive” and “New”

Ericsson Inc. v. Intellectual Ventures I LLC, Fed. Cir. (Aug. 27, 2018)

37 C.F.R. § 42.23(b) limits a petitioner’s inter partes review (“IPR”) reply papers to arguments raised by the patent owner in its opposition. Under this rule, a petitioner cannot assert new invalidity arguments, cite previously unidentified parts of a prior art reference, or introduce new evidence such as a new prior art reference. The line between this and what is merely responsive, however, can be blurry. The Federal Circuit’s recent decision in Ericsson sheds some light on this line. READ MORE