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ARTICLE · 30 OCTOBER 2023

Is It In Or Is It Out?

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Whether an argument raised in a Petitioner Reply falls within the scope of permissible arguments following a Patent Owner Response in IPR proceedings is a frequent source of dispute.

United StatesIntellectual Property
Ramya Auroprem
Ramya Auroprem

Whether an argument raised in a Petitioner Reply falls within the scope of permissible arguments following a Patent Owner Response (POR) in IPR proceedings is a frequent source of dispute. As Axinn reported back in August, the Federal Circuit issued two precedential opinions on the subject earlier this year, to clarify to the Board and the parties where the boundary lines are drawn: Arguments addressing a new claim construction position raised in the POR are good. Axonics v. Medtronic, 74 F.4th 1374, 1383 (Fed. Cir. 2023). Similarly, the Board found no fault with new arguments on a POSA's motivation to modify the asserted prior art-- as long as the Petitioner is not relying on any embodiment not cited in the Petition. See Rembrandt Diagnostics v. Alere, 76 F.4th 1376, 1385 (Fed. Cir. 2023).

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