Federal Circuit Clarifies Permissible Scope Of Petitioner Reply

• Published date: 07 September 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Axinn Veltrop & Harkrider
• Author: Mr Eric Krause, Jeannine Sano, Pan Lee and Don Wang

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.

A petitioner is required to identify, "with particularity," the grounds and supporting evidence for its challenge to each claim in its petition, which "guide the life of the [IPR proceeding]." See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1355-56 (2018) ("In all these ways, the statute [35 U.S.C. ' 312] tells us that the petitioner's contentions [in the petition] define the scope of the litigation all the way from institution through to conclusion"). In the reply, a petitioner may "only respond to arguments raised in [the POR] or decision on institution," see 37 C.F.R. ' 42.23.(b), and "may not submit new evidence or argument in reply that it could have presented earlier." See PTAB Consolidated Trial Practice Guide (CTPG) at 73 (Nov. 2019).

The strict word limit for a petition restricts the ability of petitioners to preemptively address all potential issues that may be raised in the POR, and petitioners are discouraged from splitting an IPR challenge into multiple petitions. See CTPG at 38, 59; 37 C.F.R. ' 42.24. The institution decision and POR often raise issues that a petitioner wishes to address in reply, but the line between whether a petitioner's reply includes a permissible clarification or impermissible new argument has not been entirely clear. Compare Ariosa Diagnostics v. Verinata Health, 805 F.3d 1359, 1367 (Fed. Cir. 2015) (affirming PTAB rejection of petitioner's reply argument relying on prior art embodiments not specifically identified in petition), with Apple v. Andrea Elecs. Corp., 949 F.3d 697, 706-07 (Fed. Cir. 2020) (reversing PTAB preclusion of petitioner's reply argument analyzing different application of prior art algorithm than...