In inter partes review proceedings, the Patent Trial and Appeal Board has historically been reticent to consider arguments raised for the first time in a petitioner's reply. This is because the petition, not the reply, must set forth the petitioner's prima facie case of anticipation or obviousness.1
In Axonics Inc. v. Medtronic Inc. last August,2 however, the U.S. Court of Appeals for the Federal Circuit questioned the PTAB's ability to limit the petitioner to only the grounds raised in the petition.
As the Federal Circuit had previously ruled, the Administrative Procedure Act requires the PTAB to provide the petitioner notice and an opportunity to respond to new constructions.3
So, the Federal Circuit found that the PTAB should consider new evidence and argument raised for the first time in the petitioner's reply in response to a new claim construction raised in the patent owner's response.4
But this freedom is not boundless. In Axonics, the Federal Circuit reiterated its holding "that a petitioner may not in reply rely on new prior art to teach a claim limitation."5
Meanwhile, the court left "for another day the question of whether, when presented with a new claim construction, a petitioner can rely in its reply on new embodiments from the prior art references that were relied on in the petition."6
Over the last year, the PTAB has considered these constraints and open questions from Axonics to enliven claim construction practice in PTAB proceedings.
And within the last month, the PTAB has answered key questions about Axonics' applicable scope.
Limiting Axonics: Should the Petitioner Anticipate Proposed Constructions?
First, in Life Spine Inc. v. Globus Medical Inc. in March,7 the PTAB addressed whether Axonics requires the petition to anticipate likely claim construction positions.
There, the patent owner opposed the petitioner's construction in its preliminary response. The PTAB agreed with the patent owner but still instituted and adopted its own preliminary construction.8
So, in its reply, the petitioner identified new structures from the previously cited embodiment that satisfy the PTAB's preliminary construction.9 The patent owner moved to strike and submitted a sur-reply expert declaration.10
The PTAB accepted the patent owner's sur-reply, and authorized the petitioner to cross-examine the patent owner's sur-reply declarant and file its own sur-sur-reply.11 The PTAB denied the patent owner's motion to strike.12
The PTAB rejected the patent owner's argument that the petitioner "should have anticipated" the preliminary response's proposed construction because those constructions were allegedly foreseeable "from the prosecution history and the infringement contentions."13
The PTAB examined the patent owner's proposed construction in litigation — plain and ordinary meaning — and found that it did not foreshadow the patent owner's IPR positions, let alone the PTAB's different preliminary construction.14 The PTAB found no reason that the petitioner "should have ferreted out" a proposed construction different from the patent owner's litigation construction, or a preliminary construction different from both.15
The PTAB also rejected the patent owner's argument that Axonics applies only to new claim constructions adopted following institution, not those adopted at institution.16
Without determining whether any construction adopted at institution always opens the door for new evidence and argument in reply, the PTAB found the patent owner's ability to file a sur-reply brief with a sur-reply expert declaration meant "both parties had adequate notice of the PTAB's preliminary construction and an opportunity to respond under that new construction," as the APA requires.17
Expanding Axonics: Can the Petitioner Rely on Embodiments Outside the Petition?
Next, in Unified Patents LLC v. VL Collective IP LLC in March,18 the PTAB left as an open question whether it intends to hold petitioners to embodiments raised in the petition.
There, the patent owner argued that the petitioner impermissibly relied on new embodiments of the cited art to raise new anticipation and obviousness theories for the first time in reply.19
The PTAB found, however, that the petitioner had relied "on the same embodiment ... for each invalidity ground as was relied on in the petition."20 The PTAB found it important that the cited reference "discloses only one embodiment of its invention" — a noteworthy point given that the Federal Circuit had left open the question of whether a separate embodiment could be used to respond to a new claim construction.21
Likewise, in DraftKings Inc. v. AG 18 LLC in March,22 the PTAB left open whether it intends to cabin new reply arguments and evidence to the embodiments cited in the petition.
In that case, the patent owner accused the petitioner of "trying to rewrite the petition" to rely on a separate teaching from the cited prior art reference in its reply.23
The PTAB disagreed. It found that the petitioner's reliance on a new teaching from the same embodiment of the same prior art cited in the petition was proper because the APA required the petitioner to have "adequate notice and an opportunity to respond" to a new construction first proposed in the patent owner's post-institution response.24
So, as in Unified Patents v. VL, the PTAB declined to decide whether permissible new reply arguments and evidence can address only the embodiments raised in the petition.
Tactical Considerations After Axonics
In the year since Axonics, the PTAB has allowed petitioners to raise new unpatentability grounds in response to claim constructions unforeseeable in the petition.
A patent owner wishing to limit the petition to its grounds may thus be hesitant to raise a new claim construction in its response. Instead, in some cases, the patent owner may want to present only arguments distinguishing the cited art under a plain meaning construction.
The PTAB has also reiterated that the petition need not anticipate every argument that may be raised in the response.
But a careful petitioner may still try to anticipate some arguments and proposed constructions, given the risk that the PTAB may find co-pending litigation has put the petitioner on notice of the patent owner's likely positions.
For example, if the patent owner proposed a construction in litigation before the petition was filed, the PTAB may find that the petitioner had notice and an opportunity to respond to the construction. And neither the Federal Circuit nor the PTAB has decided whether to reject new arguments based on new embodiments.
Nevertheless, a careful petitioner will still explore grounds based on every embodiment before filing the petition so that it can include all such arguments in the petition. After all, an open question is no guarantee of success on appeal.
Footnotes
1. See U.S. Patent Trial and Appeal Board, Consolidated Trial Practice Guide 73 (Nov. 2019).
2. 75 F.4th 1374 (Fed. Cir. 2023).
3. See SAS Inst., Inc. v. ComplementSoft, LLC 
, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev'd on
other grounds sub nom. SAS Inst., Inc. v. Iancu , 138 S. Ct. 1348; Ericsson Inc. v. Intellectual Ventures I LLC , 901 F.3d 1374, 1380 (Fed. Cir. 2018).
4. 75 F.4th at 1383.
5. Id. (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd. , 821 F.3d 1359, 1369 (Fed. Cir. 2016)).
6. Id. at 1383–84 (citing Apple Inc. v. Andrea Elecs. Corp. , 949 F.3d 697, 706 (Fed. Cir. 2020)).
7. IPR2022-01434, Paper No. 49 (P.T.A.B. Mar. 20, 2024).
8. Id. at 120.
9. Id.
10. Id. at 121.
11. Id.
12. Id.
13. Id. at 121–22.
14. Id. at 122.
15. Id. at 122–23 (citation omitted).
16. Id. at 123–24.
17. Id. at 124.
18. IPR2022-01086, Paper No. 43 (P.T.A.B. Mar. 27, 2024).
19. Id. at 3.
20. Id. at 5.
21. Id.
22. IPR2022-01447, Paper No. 33 (P.T.A.B. Mar. 13, 2024).
23. Id. at 54.
24. Id. at 56 (quoting ParkerVision, Inc. v. Vidal , 88 F.4th 969, 979 (Fed. Cir. 2023)).
Originally published by Law360.
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