evidence rebutting the petitioner’s grounds of unpatentability. Of course, the petitioner can respond to the patent owner’s arguments, but it “may not submit new evidence or argument in reply that it could have presented earlier [in the petition], e.g., to make out a prima facie case of unpatentability.” US Patent Trial and Appeal Board, Consolidated Trial Practice Guide 73 (Nov. 2019). See also Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“the very nature of the reply and sur-reply briefs are to respond (whether to refute, rebut, explain, discredit, and so on) . . . within the confines of 37 C.F.R. § 42.23(b).”). But what are those confines, and what facts and issues are fairly framed by the petition?The answers are necessarily fact-dependent, but the Federal Circuit and the US Patent Trial and Appeal Board (“PTAB”) have established certain boundaries for a number of scenarios. In the leading cases of Rembrandt and Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023), the court permitted the consideration of the petitioners’ “new” arguments and evidence, and explained that a petitioner is permitted to: (1) expand on previously raised arguments that have a nexus to an argument made by the patent owner or the Board; and (2) assert the same “legal ground” as its petition by relying on the “same prior art” to support the “same legal argument,” even where a new example or an additional portion of the same prior art reference is used by the petitioner in reply. Rembrandt, 76 F.4th at 1383-84; Axonics, 75 F.4th at 1384 (petitioner can reply to patent owner’s new claim construction by relying on the same prior art from the petition).Conversely, a reply is improper where a petitioner: (1) introduces a new prior art reference that was not disclosed in the petition to support a contention that is “meaningfully distinct” from what is disclosed in the petition; or (2) introduces a new theory of unpatentability, such as where the petitioner asserted in its peti

struction and arguments in Intel’s reply brief.The Federal Circuit reiterated prior case law holding that IPR proceedings are formal adjudications that must satisfy the Administrative Procedure Act (“APA”). The Federal Circuit noted that, under the APA, the Board must provide all interested parties an opportunity to address newly raised arguments. The Federal Circuit further noted that USPTO Rules dictate that a proper petitioner reply brief may only respond to arguments raised in the corresponding patent owner response, opposition, or decision on institution.According to the Federal Circuit, because Intel’s reply brief addressed a claim construction first proposed in ParkerVision’s patent owner response, the reply brief was Intel’s first opportunity to address ParkerVision’s new claim construction of “storage elements.” The Board was therefore compelled by the APA to consider the arguments raised in Intel’s reply brief. The Federal Circuit pointed to Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380 (Fed. Cir. 2023) as a recent example where it reversed the Board’s exclusion of reply brief arguments addressing a newly raised claim construction. The Federal Circuit found that Intel’s reply brief did not violate USPTO Rules because Intel’s proposed construction and arguments addressed a construction raised in the patent owner response.(3) The Board did not err in excluding ParkerVision’s sur-reply arguments addressing the prior art disclosures under Intel’s proposed construction.The Federal Circuit noted that USPTO Rules dictate that a proper patent owner sur-reply brief may only respond to arguments raised in the corresponding petitioner reply brief. The Federal Circuit found that ParkerVision’s sur-reply arguments did not respond to arguments raised in Intel’s reply brief.The Federal Circuit explained that the construction raised in ParkerVision’s patent owner response required a storage element to both “be an element of an energy transfer system” and “store non-negligible amounts of energy.” The

The Federal Circuit issued two precedential decisions in August, reminding parties in Inter Partes Review (IPR) proceedings to refrain from sandbagging and raise all arguments at the first opportunity. In Axonics v. Medtronic, No. 2022-1532, 2012 WL 5006851 (Fed. Cir. Aug. 7, 2023), and Rembrandt Diagnostics v. Alere, No. 2021-1796, 2023 WL 5158071 (Fed. Cir. Aug. 11, 2023), the Federal Circuit addressed a frequently disputed issue in IPR— the scope of arguments and evidence that a petitioner may advance in reply to a patent owner’s response (POR). While Axonics and Rembrandt provide some additional guidance as to the scope of additional arguments that may be permissible in reply, it is still not entirely clear as to the extent to which parties may address new issues and disputes that arise following institution.A petitioner is required to identify, “with particularity,” the grounds and supporting evidence for its challenge to each claim in its petition, which “guide the life of the [IPR proceeding].” See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1355-56 (2018) (“In all these ways, the statute [35 U.S.C. § 312] tells us that the petitioner’s contentions [in the petition] define the scope of the litigation all the way from institution through to conclusion”). In the r