United States: Federal Circuit Patent Watch: IPR Petitioner Must Be Given Opportunity To Respond To New Claim Construction Arguments By Patent Owner

Precedential and Key Federal Circuit Opinions

1. AXONICS, INC. v. MEDTRONIC, INC. [OPINION] (2022-1532, 2022-1533, 8/7/2023) (Lourie, Dyk, and Taranto)

Dyk, J. The Court vacated and remanded IPR decisions by the PTAB that Appellant had failed to show that challenged claims were unpatentable, holding that "the Board's refusal to consider new arguments and evidence was erroneous." In particular, the Court held that "before the Board decides a case under a construction adopted after the institution decision, it must give a petitioner an opportunity to respond to the new construction," and "[i]n particular, the petitioner must be afforded a reasonable opportunity in reply to present argument and evidence under that new construction."

2. REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. [OPINION] (2021-1796, 8/11/2023) (Moore, Dyk, and Reyna)

Reyna, J. The Court affirmed an IPR decision by the PTAB in which the PTAB found the challenged claims unpatentable. Appellant argued that the Board abused its discretion when it relied on Appellee's new theories and evidence on reply. The Court held that Appellant forfeited its argument that Appellee offered new theories, holding that Appellee's statement in its sur-reply brief that Appellee "resort[ed] to new theories in reply" was a "generic objection ... insufficient to constitute a proper objection." Alternatively, the Court held that "[Appellee's] responsive reply arguments d[id] not constitute new theories, and the Board did not abuse its discretion in considering them." The Court also held that the Board's obviousness determinations were supported by substantial evidence.

3. INCEPT LLC v. PALETTE LIFE SCIENCES, INC. [OPINION] (2021-2063, 2021-2065, 8/16/2023) (Newman, Schall, and Taranto)

Schall, J. The Court affirmed IPR decisions of the PTAB holding claims unpatentable as anticipated and/or obvious. Appellant argued on appeal that the Board committed legal error because it engaged in a "patchwork approach" that involved "picking and choosing" from the anticipatory reference's different teachings to "piece together the elements" of the challenged patent claims. The Court "s[aw] no legal error in the Board's anticipation analysis," holding that the Board did not engage in "picking and choosing" features from different teachings of the anticipatory reference, but, instead, found that the anticipatory reference "expressly describe[d] compositions that have the claimed characteristics" and were used for the same purpose. The Court also "agree[d] with the Board's ultimate obviousness conclusion" as to other claims, affirming the Board's finding that the sales numbers evidence provided by Appellant was insufficient to show commercial success, partly because Appellant "did not provide a breakdown of the number of units sold as compared to those given away for free or provided as a replacement."

Judge Newman concurred in part and dissented in part.

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