PTAB Technique: Balancing the Sandbagging

by Dennis Crouch

The Federal Circuit’s current Axonics resolution displays an ongoing stress between IPR petitioners and patent homeowners regarding litigation methods and procedural equity. A prevalent patentee technique goals to pressure the petitioner to lock in particular arguments, solely to offer a game-changing response afterward.

In Axonics, the patentee supplied a brand new declare development proposal in its post-institution response. On enchantment, the Federal Circuit decided that it was solely simply, and mandated by the APA, for the petitioner to current new responsive arguments and proof in its reply briefing. Moreover, the courtroom recommended that the patentee ought to then have the chance to submit additional proof in a sur-reply. The PTAB had adopted the patentee’s declare development proposal and refused to think about Axonics reply arguments and proof — discovering them to characterize improper new arguments.  The Federal Circuit vacated that call and despatched the case again down for reconsideration.

Sandbagging Threat and the Want for Steadiness

In his opinion for the courtroom, Decide Dyk quotes from the oral argument transcript after getting an admission from Medtronic’s lawyer (Naveen Modi from Paul Hastings) that the PTAB strategy dangers sandbagging by the patentee:

The Court docket: “However isn’t there a danger right here of sandbagging, that you simply notice there’s a very good declare development argument, [and] you allow it out of your preliminary response. In case you argued it in your preliminary response, then perhaps establishment can be denied and there would
be no estoppel. However in case you maintain again on the argument and wait to make it till the response, then you definately get the estoppel. Isn’t there a danger of that?”

Medtronic’s counsel: “Definitely, your honor, there’s a danger of that . . . .”

Oral Arg. at 14:24–51.  Modi went on to elucidate that the chance might additionally have an effect on the petitioner. The brand new rule permits the petitioner to offer an unreasonable preliminary declare development, then current new proof later if challenged. Right here, the courtroom explicitly concluded that petitioners usually are not sure to preemptively tackle all potential cheap declare interpretations.

Essential Caveats and Ongoing Questions

The case has some essential caveats concerning what argument/proof might be offered in reply.  The courtroom made clear {that a} petitioner can’t increase solely new prior artwork references in a reply to a patent proprietor’s response: “a petitioner could not in reply depend on new prior artwork to show a declare limitation.”  And, the courtroom refused to resolve an middleman query of whether or not the petitioner can depend on “new embodiments” from the already offered prior artwork with a view to counter a brand new declare development proposal. “We go away for one more day the query of whether or not, when offered with a brand new declare development, a petitioner can rely in its reply on new embodiments from the prior artwork references that had been relied on within the petition.”  That individual scenario was not at concern as a result of “Axonics, within the reply, relied on the identical embodiments because it relied on within the petition.”

In essence, whereas a petitioner can’t introduce solely new prior artwork references in a reply, it stays an open query whether or not new parts or embodiments from the identical preexisting references might be cited to deal with a brand new declare development proposed post-institution.

Placing a Center Course

On this body, the choice exhibits the Federal Circuit steering a center course – permitting petitioners to reply to modified declare constructions with arguments tied to the identical prior artwork, whereas prohibiting solely new prior artwork in replies. Ongoing instances will doubtless proceed to form the exact boundaries between truthful response and improper new arguments on this contentious discipline.

Quotation: Axonics, Inc. v. Medtronic, Inc., 2022-1532 (Fed. Cir. Aug. 7, 2023) (opinion by Decide Dyk, joined by Judges Lourie and Taranto).

In July 2023, the identical panel launched a separate resolution involving the identical events and in addition siding with the petitioner Axonics in holding that Board erred in its obviousness evaluation by improperly framing the motivation-to-combine inquiry. [LINK]

The consequence: Though the Board sided with the patentee on the 4 challenged patents, the Federal Circuit vacated these holdings and given the petitioner one other probability to show its case. and See U.S. Patent Nos. 8,036,756, 8,457,758, 8,626,314, and eight,738,148.  As with most Medtronic patents, the innovations are tremendous attention-grabbing. One set pertains to implanting a neurostimulation lead and the second set pertains to transcutaneous charging of implanted medical gadgets.