In an IPR, the petitioner typically must adhere to the arguments set forth in its original petition to institute the IPR. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“the petitioner's petition . . . is supposed to guide the life” of the IPR proceeding).

No Blanket Prohibition

The PTAB may decline to consider a new theory of unpatentability raised by petitioner in reply or a new theory of patentability raised by patent owner in sur-reply. But there is no blanket prohibition against the introduction of new evidence during an IPR because the need to rely on new evidence in response may not arise until a particular point has been raised in the patent owner response or the institution decision. See Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–82 (Fed. Cir. 2018) (explaining that the petitioner “may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner”); Genzyme Therapeutic Prods. Ltd. P'ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016) (“the introduction of new evidence in the course of the trial is to be expected in [IPR] trial proceedings” and permissible “as long as the opposing party is given notice of the evidence and an opportunity to respond to it”).

For example, where the IPR petition asserted that a single reference disclosed a limitation and the petitioner then instead argued in its reply that there was a motivation to combine references to arrive at that limitation; the petitioner's motivation-to-combine argument was an impermissible “new theory of invalidity.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1329–31 (Fed. Cir. 2019) (rejecting a new theory of unpatentability where petitioner argued for the first time in its reply that a reference disclosed a limitation); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (finding that petitioner's “subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition”).

On the other hand, a reply may expand on previously raised arguments. Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018) (finding the petitioner had “merely expand[ed] on a previously argued rationale as to why the prior art disclosures are insubstantially distinct from the challenged claims”); Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015) (reasoning that rebuttal evidence should be responsive such that it is offered “to explain, repel, counteract, or disprove the evidence of the adverse party”); Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697, 706 (Fed. Cir. 2020) (finding that the petitioner's reply asserted the same “legal ground” as its petition because it relied on the “same prior art” to support the “same legal argument”).

Generic Objection to New Theories Is Insufficient

“[T]he very nature of the reply and sur-reply briefs are to respond (whether to refute, rebut, explain, discredit, and so on) to prior raised arguments within the confines of 37 C.F.R. § 42.23(b).” Rembrandt Diagnostics, LP v. Alere, Inc., No. 2021-1796, __ F.4th __ (Fed. Cir. Aug 11, 2023) (finding that Alere's responsive reply argument “elaborates on the motivation-to-combine argument that Alere made in its petition” and was not a new theory).

In Rembrandt, the Federal Circuit also held that Rembrandt had forfeited its argument that Alere offered new theories.

            We hold that Rembrandt's generic objection is insufficient to constitute a proper objection—especially because Rembrandt expressly objected to other allegedly new theories without doing so here. . . . Indeed, it would be unfair to both the parties and the Board to read so broadly such a generic objection: Neither would have adequate notice of which theories are allegedly new. This would be particularly problematic for the Board, as it must “make judgments about . . . when a [r]eply contention crosses the line from the responsive to the new.” Ariosa, 805 F.3d at 1368.

The PTAB relied on Alere's responsive theories, which the Federal Circuit, in any event, found were not new theories, but elaborations on the previously-made motivation-to-combine argument in Alere's petition.

The patent attorneys at Thomas P. Howard, LLC enforce patents and defend against infringement in litigation nationwide including in Colorado.