Federal Circuit Clarifies Permissible Scope Of Petitioner Reply

The Federal Circuit issued two precedential decisions in August, reminding parties in Inter Partes Review (IPR) proceedings to refrain from sandbagging and raise all arguments at the first opportunity. In Axonics v. Medtronic, No. 2022-1532, 2012 WL 5006851 (Fed. Cir. Aug. 7, 2023), and Rembrandt Diagnostics v. Alere, No. 2021-1796, 2023 WL 5158071 (Fed. Cir. Aug. 11, 2023), the Federal Circuit addressed a frequently disputed issue in IPR— the scope of arguments and evidence that a petitioner may advance in reply to a patent owner's response (POR). While Axonics and Rembrandt provide some additional guidance as to the scope of additional arguments that may be permissible in reply, it is still not entirely clear as to the extent to which parties may address new issues and disputes that arise following institution.