Petitioners' Replies May Respond To Newly Raised Claim Constructions

Can a petitioner's reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner's response? In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB's final written decision of no unpatentability and remanding for further proceedings.

PTAB Disregards New Arguments and Evidence First Raised in Reply

Axonics filed two IPR petitions challenging as anticipated or obvious certain claims of Medtronic's U.S. Patent Nos. 8,457,758 and 8,738,148, both of which are directed to transcutaneous charging of implanted medical devices. Axionics' petitions did not propose express constructions of any claim term; instead, Axonics implicitly adopted a construction of two "wherein" clauses (the "one-input" construction). Medtronic's preliminary responses agreed that no express construction of any term was