`Tel: 571-272-7822
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`
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`
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`Paper 24
`Date: February 24, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`PGR2018-00092
`Patent 9,820,999 B2
`____________
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Denying Patent Owner’s Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`
`I.
`
`INTRODUCTION
`
`With our prior authorization (Paper 15), Patent Owner filed a Motion
`
`to Strike (Paper 13; “Mot.”) seeking to strike portions of Petitioner’s Reply
`
`(Paper 11; “Reply”) and Dr. Robinson’s Declaration supporting Petitioner’s
`
`Reply (Ex. 1044). Mot. 1. Petitioner filed an Opposition to Patent Owner’s
`
`Motion to Strike. Paper 16 (“Opp.”). Patent Owner filed a Reply. Paper 17
`
`(“PO Reply”).
`
`Based on our consideration of the parties’ positions, we deny Patent
`
`Owner’s Motion to Strike for the reasons that follow.
`
`II. DISCUSSION
`
`Under the Board’s rules, a petitioner’s reply “may only respond to
`
`arguments raised in the corresponding . . . patent owner response.”
`
`37 C.F.R. § 42.23(b) (2017); see also Ariosa Diagnostics v. Verinata Health,
`
`Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (discussing how, in inter partes
`
`review proceedings, a petitioner’s reply is “limited to a true rebuttal role”
`
`(citing 37 C.F.R. §§ 42.104(b)(5), 42.23(b))). A petitioner’s reply is not an
`
`opportunity to raise new theories or arguments or to submit new evidence
`
`that reasonably could have been presented in the initial petition. See Patent
`
`Trial and Appeal Board, Trial Practice Guide Update, 15 (August 2018),
`
`available at https://go.usa.gov/xU7GP (the “Updated TPG”); see also Office
`
`Patent Trial Practice Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug.
`
`13, 2018) (notice).
`
`The Updated TPG provides the option to request authorization to file
`
`a motion to strike “[i]f the party believes that a brief filed by the opposing
`
`party raises new issues, is accompanied by belatedly presented evidence, or
`
`2
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`otherwise exceeds the proper scope of reply or sur-reply.” Updated TPG 17.
`
`Specifically, the Practice Guide states that
`
`A motion to strike may be appropriate when a party
`believes the Board should disregard arguments or late-filed
`evidence in its entirety, whereas further briefing may be more
`appropriate when the party wishes to address the proper weight
`the Board should give to the arguments or evidence. In most
`cases, the Board is capable of identifying new issues or belatedly
`presented evidence when weighing the evidence at the close of
`trial, and disregarding any new issues or belatedly presented
`evidence that exceeds the proper scope of reply or sur-reply. As
`such, striking the entirety or a portion of a party’s brief is an
`exceptional remedy that the Board expects will be granted rarely.
`
`Id.
`
`In this case, Patent Owner moves to strike Dr. Robinson’s Declaration
`
`(Ex. 1044) and the corresponding paragraphs of Petitioner’s Reply (Paper
`
`11), specifically the last paragraph of Section IV.A (id. at 11), all of
`
`Section V (id. at 17–20), and all of Section VI of the Reply (id. at 21–23).
`
`Mot. 1. Patent Owner contends that “Exhibit 1044 and related argument are
`
`new evidence and argument regarding the alleged accessibility of Varenna
`
`2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but
`
`chose not to.” Mot. 1.
`
`We are not persuaded by Patent Owner’s arguments. The standard is
`
`not whether Petitioner could have raised the arguments or evidence in the
`
`Petition, but whether they respond to arguments raised by Patent Owner.
`
`37 C.F.R. § 42.23(b) (2017); Opp. 1–2. Here, Patent Owner, in its
`
`Response, argued that Petitioner had failed to demonstrate that
`
`Varenna 2012 (Ex. 1005) was publicly accessible before the priority date.
`
`Paper 10, 4–13. In its Reply, Petitioner directly rebuts that position and
`
`provides supporting evidence in the form of the Declaration of Dr.
`
`3
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`Robinson. Paper 11, 11 (citing Ex. 1044). Thus, we do not agree that Dr.
`
`Robinson’s testimony and related argument is improper.
`
`In view of the above, we determine that Patent Owner has not shown
`
`that Dr. Robinson’s Declaration and corresponding portions of Petitioner’s
`
`Reply should be stricken.
`
`III. ORDER
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s Motion to Strike is denied.
`
`
`
`FOR PETITIONER:
`
`Daniel Minion
`dminion@venable.com
`
`Bruce Haas
`bchaas@venable.com
`
`
`FOR PATENT OWNER:
`
`Brent Johnson
`bjohnson@mabr.com
`
`Parrish Freeman
`pfreeman@mabr.com
`
`
`4
`
`
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