The Board's failure to reach this issue does not mean we cannot, however, since we review de novo whether a petitioner's reply brief has improperly raised a new theory or argument. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008-09 (Fed. Cir. 2023). "Determining whether a reply has improperly raised a new theory or argument requires a comparison between the petitioner's petition and the petitioner's reply." Id.
See J.A. 1268 n.6 ("[E]ven if Yu were directed to base stations and the claims were limited to mobile devices, it would have been obvious to a POSA to take advantage of Yu's invention in a mobile device."); see also Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1002-03 (Fed. Cir. 2023) ("We review the Board's assessments of what has been argued to and put before it in an IPR for abuse of discretion.").
What a prior-art reference discloses and whether a relevant artisan would have been motivated to combine or modify references or reasonably expected success are questions of fact. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023); Regents, 903 F.3d at 1291.
Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023). We review for an abuse of discretion the Board's determination whether a reply or sur-reply was improperly non-responsive.
We have explained that "the Board is not permitted to entertain shifting arguments but must, instead, reject any entirely new theory of prima facie obviousness absent from the petition, if the petitioner attempts to inject such a theory into the proceeding post-petition." Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1002 (Fed. Cir. 2023) (cleaned up). But the Board in this case did not consider or rely on a new theory absent from the petition.
"We review Board decisions pursuant to the standards of the Administrative Procedure Act ('APA'), 5 U.S.C. ยง 550 et seq." Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1001 (Fed. Cir. 2023). "The judicial review provision of the APA includes a harmless error rule."