pEtitioner cannot respond substantively to patent owner's preliminary response

PTAB denied a petitioner's motion to submit supplemental information after a patent owner's Preliminary Response finding that the request was not a permitted reply.  VTech, Inc. v. Spherix Inc., No. IPR2014-01432 (PTAB Jan. 21, 2015).  In this case, petitioner VTech filed an IPR petition challenging Spherix's patent.  The patent owner Spherix filed a Preliminary Response contending that  certain claims of a prior art cited by the petitioner could not constitute prior art because petitioner failed to establish whether the challenged claims were part of initial application or of a preliminary amendment.  Petitioner requested authorization to file a motion to submit supplemental information and to file the patent prosecution history of the prior art to show that the cited claims were supported by original disclosure.  In rejecting the request, the Board agreed with the patent owner that the "proposed submission [] would amount to a reply to Spherix's Preliminary response on a substantive issue, and such a reply is not permitted" under 37 CFR 42.64 and 42.123.