{"id":2672,"date":"2020-02-06T19:16:09","date_gmt":"2020-02-07T00:16:09","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2672"},"modified":"2020-02-08T14:44:41","modified_gmt":"2020-02-08T19:44:41","slug":"petitioner-in-an-ipr-is-entitled-to-respond-to-arguments-made-by-patent-owner","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2672","title":{"rendered":"Petitioner in an IPR is Entitled to Respond to Arguments Made by Patent Owner"},"content":{"rendered":"\n<p>In <a href=\"http:\/\/www.cafc.uscourts.gov\/sites\/default\/files\/opinions-orders\/18-2382.Opinion.2-7-2020_1528740.pdf\">Apple Inc. v. Andrea Electronics Corp.<\/a>, [2018-2382, 2018-2383] (February 7, 2020), the Federal Circuit vacated the Board&#8217;s decision in a first IPR on U.S. Patent No. 6,363,345 because the the Board erred in refusing to consider Apple\u2019s reply arguments, but in the second IPR on the patent, it affirmed the determination that claims 5-9 were not invalid.<\/p>\n\n\n\n<p>The Board\u2019s determinations that a party exceeded the scope of a proper reply are reviewed for abuse of discretion. The Federal Circuit said that a reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.  Thus, it had to determine whether we must consider: whether the petitioner\u2019s reply brief was responsive to arguments originally raised in its petition; or whether the reply arguments are responsive to arguments raised in the patent owner\u2019s response brief.<\/p>\n\n\n\n<p>The Federal Circuit noted tat Apple\u2019s legal ground did not change in its reply\u2014 its reply still asserted that claims 6\u20139 would have been obvious over the same references.  Further, Apple&#8217;s arguments were not the types of arguments that we have previously found to raise a \u201cnew theory of unpatentability.\u201d   The Federal Circuit noted that Apple\u2019s reply does not cite any new evidence or unidentified portions of the references, but merely demonstrated another example of the same algorithm to further explain why the reference discloses the claim elements.   The Federal Circuit said that parties are not barred from elaborating on their arguments on issues previously raised.<\/p>\n\n\n\n<p>The Federal Circuit concluded that Apple\u2019s reply squarely responds to the Patent Owner Response.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>In Apple Inc. v. Andrea Electronics Corp., [2018-2382, 2018-2383] (February 7, 2020), the Federal Circuit vacated the Board&#8217;s decision in a first IPR on U.S. Patent No. 6,363,345 because the the Board erred in refusing to consider Apple\u2019s reply arguments, &hellip; <a href=\"https:\/\/patents.harnessip.com\/?p=2672\">Continue reading <span class=\"meta-nav\">&rarr;<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2672","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2672","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2672"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2672\/revisions"}],"predecessor-version":[{"id":2673,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2672\/revisions\/2673"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2672"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2672"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2672"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}