In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, partners Justin Gillett and Paul Stewart write about a recent decision in Axonics Inc. v. Medtronic Inc., a case that brings some clarity to inter partes review petitioners’ ability to respond to new claim constructions proposed after an IPR is instituted.
In the article, the authors examine the case in which the court held that “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, at least where it relies on the same embodiments for each invalidity ground as were relied on in the petition.”
Gillett and Stewart explain that the court’s decision raises strategic considerations for IPR petitioners, saying “IPR petitioners may focus briefing on existing claim interpretations, without also addressing potential future constructions. However, because of the decision’s ambiguity regarding other embodiments, litigants may want to consider addressing additional embodiments of their cited prior art references in case those embodiments later prove useful to address a claim construction raised after institution.”
The authors further discuss the decision’s impact on patent owners, adding “For patent owners, the court’s decision means that sandbagging to withhold a stronger claim construction until after institution will not deprive their opposition of a chance to address that construction.”
