An IPR petitioner typically must adhere to the arguments set forth in its original petition to institute the IPR, but the petitioner is entitled to respond to new arguments made by the patent owner.

New Arguments Allowed, But Not New Prior Art, in Reply to New Claim Construction

Where the patent owner offers a new claim construction for the first time in its response after the institution decision, an IPR petitioner may introduce new arguments and but not new prior art evidence in reply under the newly proposed claim construction. Axonics, Inc. v. Medtronic, Inc., No. 2022-1532, __ F.4th __ (Fed. Cir. Aug. 7, 2023). A remaining open question, however, is whether a petitioner can rely in its reply on new embodiments from the prior art references that were relied on in the petition after the patent owner presents a new claim construction.

            Barring argument and evidence in a reply directed to a new claim construction proposed by the patent owner would create opportunities for sandbagging by the patent owner in order to create an estoppel. A patent owner has the opportunity in a preliminary response to oppose institution on the ground that the claim construction relied on by the petitioner is incorrect, and the Board may adopt the patent owner's proposed claim construction and deny institution if the petition fails to demonstrate a reasonable likelihood that a claim would be unpatentable under the correct claim construction. See 35 U.S.C. § 314(a). The result would be that there would be no institution and no estoppel pursuant to 35 U.S.C. § 315(e). But if instead of raising the issue in a preliminary response, a patent owner sits on its strongest claim construction arguments before institution and then raises them in response after institution, a patent owner could obtain a favorable final IPR decision and an estoppel without the Board's reaching the merits of any invalidity arguments under the newly adopted claim construction.

Also, while it is permissible for the PTAB to adopt a new claim construction in a final written decision, it must give the parties an opportunity to respond to the new construction. See WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1328 (Fed. Cir. 2018) (“[T]he Board was permitted to issue a new construction in the final written decision given that claim construction was a disputed issue during the proceedings . . . [and] is not bound to adopt either party's preferred articulated construction of a disputed claim term.”); Praxair Distribution, Inc. v. Mallinckrodt Hospital Prods. IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018) (affirming the Board's decision to adopt a claim construction for the first time in the final written decision); Hamilton Beach Brands, Inc. v. f'real Foods LLC, 908 F.3d 1328. 1338 (Fed. Cir. 2018) (reiterating that the Board cannot adopt a new claim construction without giving the petitioner an opportunity to respond); Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 1263 (Fed. Cir. 2021) (holding that because the Board's construction in the final written decision “diverged from the agreed-upon” construction of the parties, the Board needed to provide notice and an adequate opportunity to respond).

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