PTAB Year in Review – Scope of Reply: The Line Between Presenting Permissible Responsive Arguments and Raising Impermissible New Arguments Continues to Take Shape

The PTAB had been historically strict in prohibiting a petitioner from raising new arguments for the first time in its reply brief. All arguments must be adequately presented in a Petition for inter partes or post-grant review in order to receive the Board’s consideration. Recently, however, the Federal Circuit reversed the Board for failing to allow petitioners to fully address patent-owner arguments—especially claim construction—in their replies.¹

In Axonics, Inc. v. Medtronic, Inc.,² the Board adopted a claim construction first presented in the patent owner’s response after the institution decision and declined to consider Axonic’s reply arguments under the new claim construction.³ The Federal Circuit reversed that aspect of the decision, and remanded with instructions to the Board to consider the petitioner’s arguments under the new claim construction.⁴ The Court left open the issue of whether a petitioner could rely on a new embodiment from the prior art references relied on in the petition, when presented with new claim construction.⁵ Since Axonics, the Board has issued several decisions providing guidance on where to draw the line between a fulsome reply and improper new arguments, especially in the context of claim constructions advanced in the patent owner response.

The general rule that has emerged at the Board from its post-Axonics case law is that petitioners may cite new portions of prior art references and make new arguments in response to claim construction raised in the patent owner’s response—provided the petitioner relies on the same prior-art embodiments to satisfy the same limitations as those relied upon in the petition.⁶

For example, in DraftKings Inc. – DE v. AG 18, LLC d/b/a Arrow Gaming,⁷ the Board found that a petitioner’s reliance on a new teaching within a previously cited embodiment was a proper reply.⁸ Even though the petitioner invoked a definition from an embodiment that was not discussed in the petition, the petitioner’s argument centered on how the embodiment cited in the petition satisfied the claim limitations.⁹ Similarly in Life Spine, Inc. v. Globus Medical, Inc.,¹⁰ the Board denied the patent owner’s motion to strike new obviousness theories offered by a petitioner in its reply.¹¹ The Board specifically observed that the petitioner’s reply arguments relied on the same embodiment from the same prior art reference that it discussed in the petition to support the same legal argument.¹² To be fair, however, the Board permitted the patent owner to file a sur-reply brief and supplemental expert declaration that addressed petitioner’s reply obviousness theories.¹³ Accordingly, both parties had notice and an opportunity to brief their positions under the Board’s claim construction.

The Board has also allowed the reliance on new evidence in response to claim constructions. This includes citations to new portions of prior art references, new data or calculations, and the submission of new exhibits or declarant testimony. In Guardant Health, Inc. v. University of Washington,¹⁴ for example, the petitioner cited a new paragraph from the prior art for the first time in its reply.¹⁵ The Board held that even though the petition did not explicitly cite the paragraph, it was a proper response to the patent owner’s newly proposed claim construction.¹⁶

Pioneer Pet Products, LLC v. Oil-Dri Corporation of America,¹⁷ went even further. There, the Board allowed new calculations and test data to be submitted in reply.¹⁸ The Board found that this new evidence did not exceed the proper scope of a reply because it was consistent with the arguments raised in the petition, and used to rebut the arguments patent owner raised in response.¹⁹ It also helped that the new calculations and test data related to the same embodiments of the same prior art relied upon in the petition.²⁰

In Envirotainer AB v. DoubleDay Acquisitions LLC d/b/a CSafe Global,²¹ the Board allowed the petitioner to rely on new exhibits in its reply in support of its claim construction argument, even though the exhibits were available and relevant at the time the petition was filed, but were not submitted.²² The Board held that any exhibits or declarant testimony filed in connection with a disputed claim construction did not exceed the proper scope of reply because the institution decision and patent owner’s proposed construction in response opened the door to such submissions.²³

Importantly, petitioners have been allowed to present new replies to claim construction arguments even where the petition does not offer any claim construction in the first instance.²⁴

Where a petition does offer claim construction, the Board has allowed petitioners to revise those claim constructions in reply to a patent owner’s response. In Arthrex, Inc. v. P Tech, LLC,²⁵ the Board allowed a petitioner to revise its claim construction from that presented in the petition, in response to patent owner’s arguments.²⁶ The Board allowed this revision, finding that the changes to the claim construction amounted to deletions of a few words, and the resulting construction, though revised, was largely consistent with the construction in the petition.²⁷ The petitioner was then entitled to explain how the prior art satisfied the claim limitations under this new construction.²⁸

Outside of claim construction, a petitioner may also raise new arguments when those arguments are in direct reply to points raised in the patent owner response. In Amazon.com, Inc. et al v. WAG Acquisition, LLC,²⁹ for example, the petitioner’s reply extended a rationale used to challenge one claim limitation in the petition to a different claim limitation in the reply.³⁰ The Board found that this argument was permitted under Axonics because it countered the patent owner’s response arguments.³¹

In view of this strong trend following Axonics, patent owners should be cautious about saving claim construction arguments for their patent owner response. Where new claim constructions are raised, and the petitioner is allowed to reply with new arguments, evidence, or even claim construction positions, the patent owner should ensure that they are permitted a sur-reply that includes a fulsome response to those new positions, including supplemental evidence if necessary. Additionally, patent owners should be on the lookout for petitioners who mischaracterize patent-owner arguments as new claim constructions in order to improperly change their invalidity theories during trial. The issue of what constitutes a “new” claim construction that entitles a petitioner to respond with new arguments is not well developed, but we expect this issue to receive some attention as parties continue to test the boundaries of the proper scope of reply.

[1] See, e.g., Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1383 (Fed. Cir. 2023).
[2] Id.
[3] Id. at 1379.
[4] Id. at 1384-85.
[5] Id. at 1383-84.
[6] See, e.g., Unified Patents, LLC v. VL Collective IP, LLC, IPR2022-01086 (PTAB); Assa Abloy AB et al v. CPC Patent Technologies Pty Ltd., IPR2022-01045 (PTAB).
[7] IPR2022-01447, Paper No. 33 (P.T.A.B. Mar. 13, 2024).
[8] Id. at 56
[9] Id.
[10] IPR2022-01434, Paper No. 49 (P.T.A.B. Mar. 20, 2024).
[11] Id. at 124.
[12] Id.
[13] Id.
[14] IPR2022-01158, Paper No. 47 (P.T.A.B. Jan. 11, 2024).
[15] Id. at 28.
[16] Id. at 31.
[17] IPR2022-01138, Paper No. 36 (P.T.A.B. Dec. 19, 2023).
[18] Id. at 29.
[19] Id.
[20] Id. at 30.
[21] IPR2022-00293, Paper No. 83 (P.T.A.B. Feb. 1, 2024).
[22] Id. at 104.
[23] Id.
[24] See Syngenta Crop Protection AG v. UPL Ltd., PGR2023-00017 (P.T.A.B. Jul.26, 2024 ) (allowing petitioner to counter the patent owner’s claim construction and apply those constructions to the prior art in reply); The Walt Disney Company et al v. WAG Acquisition, LLC Walt Disney, IPR2023-00813 (P.T.A.B. Feb. 27, 2024) (allowing the petitioner to reply to patent owner’s arguments about the preamble of a challenged claim being limiting, where the petition took no position on whether the preamble was limiting).
[25] IPR2022-01043, Paper No. 22 (P.T.A.B. Nov. 21, 2023). 26 Id. at 28-29.
[27] Id.
[28] Id.
[29] IPR2022-01433, Paper No. 26 (P.T.A.B. Feb. 15, 2024).
[30] Id. at 93.
[31] Id.

This article appeared in the 2024 PTAB Year in Review: Analysis & Trends report.