Federal Circuit IP
Axonics, Inc. v. Medtronic, Inc.
CAFC Opinion No. 2022-1532-1533, Decided August 7, 2023
(Lourie, Dyk, Taranto)
Overview: Petitioner in IPR must be given an opportunity to respond to new construction raised in the Patent Owner Response (POR).
- Medtronic, Inc. owns the ’758 and ’148 patents which are directed to the transcutaneous charging of implanted medical devices.
- Axonics filed two IPR petitions challenging claims of the ’758 and ’148 patents as anticipated by three prior art references.
- After IPR Institution, Patent Owner proposed new claim construction in its patent owner response.
- Axonics, in its reply, argued claims were obvious even under new construction and pointed to new evidence in previously relied-upon embodiment
- PTAB accepted Medtronic’s new construction and refused to consider Axonics’ reply arguments as impermissible new arguments.
- Axonics appealed.
Issue on Appeal: Did the PTAB err in refusing to consider Axonics’ reply arguments and evidence under the new construction?
Holdings: Yes, where a patent owner in an IPR first proposes a claim construction in a patent owner response, a petitioner must be given the opportunity in its reply to argue and present evidence of anticipation or obviousness under the new construction.
Fed. Cir. Analysis:
- Under the Board’s rules a petitioner is entitled to respond to new arguments made in a patent owner’s response, however, the Board’s rules do not cover the case where a patent owner offers a new claim construction for the first time in its response after the institution decision.
- The Court found that this case fell squarely within the rule of SAS, Ericsson, Hamilton Beach, and Qualcomm: that, under the APA, when the Board adopts a new claim construction following institution, an IPR petitioner must have adequate notice and an opportunity to respond under the new construction.
- For Patent Owners: Carefully consider the full disclosure of Petitioner’s relied-upon prior art embodiments before raising a new claim construction in the Patent Owner Response.
- For Petitioners: Was court hinting that it might be permissible to rely on new embodiments in response to new claim construction in POR?