An article authored by Scott McKeown titled "New Pair of Federal Circuit Precedents Add Wiggle Room for PTAB Petitioners" was published in IAM. In inter partes review (IPR) proceedings, the scope of arguments and evidence that petitioners may present in a post-institution filing is often litigated. That is, patent owners will often accuse petitioners of raising "new arguments" at trial. Petitioners often respond to such accusations by explaining that their arguments are consistent with positions of the petition and directly responsive to a patent owner's critiques.
In this article, Scott discusses how recent precedential decisions in Axonics Inc v Medtronic Inc and Rembrandt Diagnostics v Alere have clarified what may be permissible for petitioners to present in a reply, although leaving more nuanced questions unanswered. He also provides takeaways to keep in mind during PTAB trials. Read more (subscription required).
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