37 C.F.R. § 42.23
Oppositions, replies, and sur-replies
(a) Oppositions, replies, and sur-replies must comply with the content requirements for motions and, if the paper to which the opposition, reply, or sur-reply is responding contains a statement of material fact, must include a listing of facts that are admitted, denied, or cannot be admitted or denied. Any material fact not specifically denied may be considered admitted.
(b) All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution. A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.
Notes of Decisions
Cited in 53
cases (33 in the last 5 years), 2015–2025 · leading case: Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (2016)
“In reaching its decision, the Board refused to consider IBS’s ■ reply brief and accompanying expert declaration because it found that IBS’s reply was improper under two regulations: first under 37 C.F.R. § 42.23 (b), which provides that a “reply may only respond to arguments…”
Henny Penny Corporation v. Frymaster LLC (2019)
“Decision, 2017 WL 6551237 , at *5, *8 (citing 37 C.F.R. § 42.23 (b) (“All arguments for the relief requested in a motion must be made in the motion.”
Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc. (2018)
“[P]atent [O]wner [R]esponse,” 37 C.F.R. § 42.23 (b); see 5 U.S.C. § 556 (d) (entitling a party “to submit rebuttal evidence”); see also Belden Inc.”
Synopsys, Inc. v. Mentor Graphics Corporation (2016)
“See 37 C.F.R. § 42.23 (b). In any case, the Board did not entirely ignore this argument, noting that “Synopsys does not point to any evidence or persuasive argument to explain how [the output of AND gate 232] disclose[s] the claimed instrumentation signal.”
Ericsson Inc. v. Intellectual Ventures I LLC (2018)
“s limitation, the Board rejected the portions of Ericsson's Reply that argued that to a person of ordinary skill, given that interleaving packets together was known in the art, "[t]he difference between interleaving R-blocks together and interleaving S-blocks together is…”
Corephotonics, Ltd. v. Apple Inc. (2023)
“See 37 C.F.R. §§ 42.23 (b), 42.120(a). The petitioner’s “reply may only re- spond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner re- sponse, or decision on institution.”
Parkervision, Inc. v. Vidal (2023)
“” 37 C.F.R. § 42.23 (b). A proper “sur-reply may only respond to arguments raised in the corresponding re- ply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”
Redline Detection, LLC v. Star Envirotech, Inc. (2015)
“See 37 C.F.R. §§ 42.23 (opposition and replies), 42.”
Belden Inc. v. Berk-Tek LLC (2015)
“1 Belden asserts that Berk-Tek’s filing of the Baxter declaration violated 37 C.F.R. § 42.23 (b), which states that “[a] reply may only respond to arguments raised in the corresponding opposition or patent owner response.”
In Re: Nuvasive, Inc. (2016)
“" 37 C.F.R. § 42.23 (b). But satisfying that rule does not mean that the pre-Response notice was sufficient.”
Acceleration Bay, LLC v. Activision Blizzard Inc. (2018)
“" 37 C.F.R. § 42.23 (b). Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper.”
Rembrandt Diagnostics, Lp v. Alere, Inc. (2023)
“” 37 C.F.R. § 42.23 (b). And in sur-reply, the pa- tent owner “may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-ex- amination of any reply witness.”
— 37 C.F.R. § 42.23(b) — 2 cases
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