Identifying Impermissible New Arguments And Their Effect On IPR Proceedings And Appeals

In inter partes review (IPR) proceedings, the petition and patent owner's response generally define the scope of the parties' arguments. This scope generally limits a petitioner or patent owner's ability to raise new arguments in subsequent papers, such as a reply or sur-reply, or at an oral hearing. For petitioners, a reply generally "may only respond to arguments raised in . [a] patent owner preliminary response, patent owner response, or decision on institution," and those reply arguments are often bounded by the positions taken in the initial petition. For patent owners, arguments not raised in its patent owner response may be deemed waived if raised later, and the sur-reply "may only respond to arguments raised in the corresponding [petitioner] reply." If the Patent Trial and Appeal Board (Board) determines that a party is making untimely arguments, it may decline to consider them on the merits.