The PTAB has, to date, been very strict about the timeline of events in an inter partes review proceeding, as well as ensuring the proceedings are streamlined.  That’s what makes the Board’s decision in Zodiac Pool Systems, Inc. v. Aqua Products, Inc., (IPR2013-00159) unique.  In that case, a sur-reply was allowed in response to an expert declaration that was submitted in a reply brief.

More specifically, Patent Challenger included an expert declaration supporting its arguments refuting Patent Owner’s arguments of secondary considerations of non-obviousness. After noting that the reply exceeded the word limit, Patent Owner (who had been denied discovery on related issues) argued that it had no opportunity to respond to any potential inaccurate statements in the declaration.

Patent Owner also requested permission to file a short sur-reply in response to a review of documents produced by Patent Challenger after filing of the reply. The Board approved Patent Owners request, with the stipulation that sur-reply contain only rebuttal of allegations in Patent Challenger’s expert declaration.