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).
On October 16, 2023, the Federal Circuit refereed another line dispute, holding in Corephotonics that an argument addressing whether the asserted prior art is in the same field of endeavor as the challenged patent, i.e., analogous art, also landed inside the line (or at least on the line). Specifically, because the new arguments in Reply relied on the same references, disclosures, and invalidity theories as the Petition, there was sufficient notice to the Patent Owner. Corephotonics v. Apple, 2023 WL 6798899, at *12-13 (Fed. Cir. Oct. 16, 2023).
Corephotonics serves as a reminder that Petitioners need to be as inclusive as possible in their citations in the Petition (obviously while still directing the Board to instructive parts of prior art references to facilitate the institution decision analysis) in order to avoid a return ace from the Patent Owner. So far this year, 40-Love.
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