Ericsson Inc. v. Intellectual
Ventures I LLC, Fed. Cir. (Aug. 27,
2018)
37 C.F.R. § 42.23(b) limits a petitioner's
inter partes review ("IPR") reply
papers to arguments raised by the patent owner in its opposition.
Under this rule, a petitioner cannot assert new invalidity
arguments, cite previously unidentified parts of a prior art
reference, or introduce new evidence such as a new prior art
reference. The line between this and what is merely responsive,
however, can be blurry. The Federal Circuit's recent decision
in Ericsson sheds some light on this line.
By way of background, Ericsson petitioned for an IPR of an
Intellectual Ventures patent relating to interleaving communication
data packets. Specifically, the patent disclosed a way of
rearranging data bits across multiple packets to protect against
communication errors. The Board instituted review on certain
independent claims that were limited to "encoding"
generally but that were not limited to
