Takeaway: The Board authorized a reply and sur-reply limited to responding to Patent Owner’s arguments based on the Supreme Court’s Alice decision made in the Patent Owner Preliminary Response, because the Alice decision was issued after the Petition was filed.

In its Order, the Board authorized a reply by Petitioner to the Patent Owner Preliminary Response limited to responding to Patent Owner’s arguments, based on the Alice decision, with respect to Petitioner’s asserted grounds of unpatentability. Patent Owner was also authorized a sur-reply. The Board authorized the reply, because in this case the Supreme Court’s Alice decision was issued after the Petition was filed, but before the Patent Owner Preliminary Response, such that Patent Owner was able to address theAlice decision and Petitioner was not.

The United States Postal Service v. Return Mail, Inc., CBM2014-00116
Paper 7: Order on Conduct of the Proceeding
Dated: July 25, 2014
Patent: 6,826,548
Before: Kevin F. Turner, Barbara A. Benoit, and Jo-Anne M. Kokoski
Written by: Kokoski