First, in Belden Inc. v. Berk-Teck LLC, the Federal Circuit reminded practitioners of the procedural framework established by the America Invents Act for IPRs.[1] The procedure: (1) begins with a petition from a party challenging patent validity, followed by (2) a preliminary response from the patent owner (PO) and (3) then a decision whether to institute. If an IPR is instituted, the procedure further includes: (4) a post-institution response from PO followed by (5) a reply from the petitioner. The petition, response(s), and reply may each be submitted with a supporting expert declaration, which serves as direct testimony. A party has the right to cross-examine an affiant who has submitted testimony, and both parties have a right to an oral hearing.
Furthermore, “in the event that cross-examination occurs after a party has filed its last substantive paper on an issue, ... the Board may authorize the filing of observations on that cross-examination, though the observations are to be brief and nonargumentative.”[2] Finally, surreplies are allowed with board permission, and a party has the right to move to exclude evidence.[3] Observations, surreplies and motions to exclude give a PO options to respond to petitioner replies and build a record to rely on at the oral hearing.
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