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Failure to challenge “new” arguments during an IPR proceeding may waive APA procedural objections on appeal

In Securus Techs. v. Global Tel*Link Corp., the Federal Circuit rejected a patent owner’s argument that the PTAB improperly considered new arguments raised in the petitioner’s reply brief, in part because the patent owner did not object during the IPR proceeding.

In Securus, the Federal Circuit reviewed a pair of final written decisions involving U.S. Patent No. 7,860,222. The claims of the ‘222 patent describe investigative tools and communication monitoring that include such features as:

an investigative tools module in communication with said communication service module operable to allow a user to monitor said communications between individuals and to place event identifiers in association with said communications between individuals, said event identifiers comprise a plurality of bookmarks representing different events of interest …

Or, as more succinctly described by the Federal Circuit, “a system and method for reviewing conversation data for certain events and noting when something of interest happens.”

In two IPR decisions, the Board found all claims unpatentable. In affirming the unpatentability of some claims, the Federal Circuit rejected Securus’ argument that the Board erred in considering arguments raised for the first time in Global’s reply. In doing so, the Federal Circuit took Securus to task for not raising this objection during the IPR proceeding.

Moreover, it is incumbent upon the party complaining of some procedural violation—such as the inclusion of improper rebuttal in a reply brief—to first raise the issue below. … Securus presents no evidence that it availed itself of the procedures for filing a sur-reply, a motion to strike, or a conference call to challenge this allegedly improper argument.

This decision emphasizes the importance of promptly challenging the introduction of arguments that stray from the theories set forth in the petition. The failure to act during the proceeding may be held against you on appeal.

The Federal Circuit also reversed and remanded as to some claims because the Board “failed to articulate any reason supporting its decision.” Referring to its past decisions in Nuvasive and Cutsforth, the Federal Circuit again indicated that “it is not adequate [for the Board] to summarize and reject arguments without explaining why the [Board] accepts the prevailing argument.” Whether this will affect the Board’s prior finding of unpatentability of these claims remains to be seen. Although such reversals result in new decisions by the Board, they rarely result in new outcomes.

Posted on 05/09/2017 by Deakin Lauer