First Impressions – Parties Must Make Their Cases in Their Initial Briefs

In In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 56 (Sept. 3, 2020), the Board reaffirmed that the grounds for unpatentability and the evidence supporting those grounds must be provided in the Petition itself, and that new arguments may not be raised in a party’s sur-reply brief.  Specifically, the Board denied the Petitioner’s motion to supplement its expert declaration after institution with additional testimony regarding reasons to combine, and refused to consider the Patent Owner’s additional argument, raised for the first time in its Sur-Reply, distinguishing the cited prior art reference.

Petitioners, In-Depth Geophysical, Inc. and In-Depth Compressive Seismic, Inc. filed a Petition requesting inter partes review of claims 1-17 of U.S. Patent No. 9,846,248, directed to methods of acquiring seismic data. Following an oral hearing held on June 9, 2020, the final Written Decision held that the Petitioner had shown by a preponderance of the evidence that challenged claims 1-9 are unpatentable, but had not shown, by the same standard, that challenged claims 10-17 are unpatentable. The case was heard by Administrative Patent Judges Moore, Daniels, and Tartal.

According to the Rules and governing case law, in order to set forth a ground of unpatentability based on obviousness, the Petitioner must identify both (i) the specific teachings of each prior art reference relied upon with respect to each claim limitation; and (ii) a rationale for why one of ordinary skill in the art would have combined those specific teachings in the specific manner claimed. Here, the Petitioner did not appear to do either in the Petition - the petition specified neither a particular reference with respect to each and every element, instead generally citing two or more references together, nor the rationale for combining the references.

The Petitioner subsequently moved to supplement its expert declaration to include additional testimony to support the obviousness grounds, but the Board denied the request. The Petitioner then filed a Reply that identified the specific combinations of references relied upon, and cited new evidence regarding why one of ordinary skill in the art allegedly would have combined the cited references to arrive at the claims. According to the Petitioner, these new arguments could not have been filed with the petition because the Petitioner was unaware at that time whether the Board would accept its claim construction positions, which would affect the way the prior art was applied to the claims.  The Petitioner further noted that the arguments had been disclosed to the Patent Owner during the deposition of the Petitioner’s expert, which occurred before the Patent Owner filed its Reply, leaving ample time for the Patent Owner to address the new arguments in its brief.

In an interesting flip of the coin, however, the Petitioner also argued that the Patent Owner had raised a new argument in its Sur-Reply. According to the Patent Owner, the argument was not new, as it was disclosed in the Response. However, the Board disagreed and held that the phrase from the Response that the Patent Owner had relied upon to support the argument was, in fact, directed to a different argument.  The Board likewise determined that the Petitioner’s new arguments and amendments submitted with the Reply were untimely.

The Board noted that the statutes and rules governing inter partes reviews are clear:  a Petitioner is required to specify all grounds and evidence in the Petition itself and a Patent Owner must set forth all substantive arguments for patentability in the Response. See 35 U.S.C. § 312(a); 37 C.F.R. § 42.104(b); Trial Practice Guide (Nov. 2019).

In this case, the Board determined that claims 1-9 were anticipated by cited art but that the two obviousness grounds in the Petition “do not appear to identify the specific combinations of teachings that Petitioner is relying upon” and that the Petitioner’s rationales for combining the cited references likewise “lack specificity.” Accordingly, the Board concluded that the Petitioner had not shown by a preponderance of the evidence that one of ordinary skill in the art would have considered the claimed invention obvious.