Imagine That IP Law Blog

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a showing of good cause.” 37 C.F.R. § 42.108(c).

The PTAB’s case law suggests that “[g]ood cause may exist in certain situations such as where new evidence comes to light after the filing of a petition or a legal argument of first impression is made by the Patent Owner.” Xactware Sols., Inc. v. Pictometry Int’l Corp., IPR2016-00593 (non-precedential).

Director Vidal’s Decision in Vector Flow Inc. v. HID Global Corporation, case number IPR2023-00353, highlights an example where good cause exists because new information came to light between the filing of the Petition and the Patent Owner Preliminary Response. In Vector Flow, after the Patent Owner submitted a Preliminary Response, the Petitioner requested permission to file a reply addressing the Fintiv factors for discretionary denial under section 314(a). The Patent Owner argued against this, stating that the Petitioner had already addressed the foreseeable issues in the Petition and that further briefing could prejudice the Patent Owner. The Patent Owner also emphasized that it had invested resources in developing arguments and that allowing the Petitioner to address these issues again would be improper.

The PTAB sided with the Patent Owner and refused the Petitioner’s request for a reply.  The Panel found that the Petitioner failed to show good cause because the Petitioner should have anticipated the Fintiv argument from the Patent Owner, especially considering the advanced stage of the parallel litigation and upcoming deadlines. Vector Flow requested Director review, and  Director Vidal granted the review, reversed and found that the Petitioner did have good cause for the additional briefing because new information had come to light after the Petition was filed.

Specifically, Director Vidal identified that the Panel’s refusal to permit the additional reply overlooked recent changes in the parallel district court proceeding and new evidence from the Patent Owner. For example:

• The Petition could not have addressed the newly scheduled trial date and claim construction order as they emerged after the Petition but before the Preliminary Response;
• The Petition could not have addressed the Patent Owner’s evidence about median time-to-trial statistics in the District of Delaware and details related to Judge Williams because Judge Williams had been added to the bench subsequent to the filing of the petition; and
• The Petition could not have addressed the Patent Owner’s assignor estoppel arguments, which surfaced post-Petition.

Director Vidal then looked to the original Fintiv decision which held that “supplemental briefing on the issue of discretionary denial is necessary in this case to give Petitioner an opportunity to respond” in “light of the apparent change in status of the parallel proceeding”); Id, Pg. 7 and “A petitioner, however, cannot be expected to anticipate every argument that may be raised by a patent owner.” Id, Pg. 7Accordingly, Director Vidal determined that there was a good cause to permit Petitioner to submit additional briefing because new information had come to light regarding the district court litigation.

In granting the additional briefing, Director Vidal elected not to follow Ontel Products Corp. v. Guy A. Shaked Investments Ltd., IPR2020-01703, Paper 10, 2 (PTAB Feb. 4, 2021) cited by the Patent Owner.

In Ontel, the Petitioner sought to file a Reply to address what it believed were misleading interpretations of the law and misrepresentations of prior art in the Patent Owner’s Preliminary Response. The Patent Owner  argued that the Petitioner had not shown good cause. Instead, Petitioner wanted to address in the proposed Reply arguments that should have been addressed in the Petition. The PTAB held that “[w]e agree with Patent Owner that the points Petitioner seeks to make in its proposed Reply are either subjects that Petitioner should have developed in its petition or issues that the Board is equipped to assess without further briefing during the preliminary phase of this proceeding. “ Ontel Products Corp. v. Guy A. Shaked Investments Ltd., IPR2020-01703

As a result, Director Vidal’s ruling in Vector Flow emphasizes that good cause exists for the Petitioner to file an additional pre-institution briefing when new unanticipated updates, such as a newly scheduled trial date, emerge after the initial petition. Vector Flow stands in contrast to cases like Ontel, where  good cause does not exist when the proposed subjects for the Reply are ones that Petitioner should have addressed in its petition or issues (such as claim construction)  that the PTAB  is equipped to assess.

For Petitioners
The PTAB observes that “[t]o the extent that Petitioner seeks to identify new citations or bolster arguments in the Petition, we are not required to allow Petitioner to do so.” Xactware Sols., Inc. v. Pictometry Int’l Corp., IPR2016-00593 (non-precedential). Accordingly, for a Petitioner that is requesting additional pre-institution briefing, it is critical that the request make clear that the arguments to be presented in the additional briefing could not have been made in the petition because the arguments are based on facts that did not exist at the time of the filing or the arguments are in response to an argument (such as assignor estoppel) raised by the Patent Owner that could not have been reasonably foreseen at the time of filing the petition.  

For Patent Owners
In an IPR, “[i]t may always be the case that a Petitioner is unhappy with how Patent Owner characterizes the facts and law presented in the Petition... [The PTAB] rules, however, provide for a Petitioner Reply only when good cause exists.” Xactware Sols., Inc. v. Pictometry Int’l Corp., IPR2016-00593 (non-precedential). Therefore, Patent Owners should make clear to the PTAB that the relief sought by the Petitioner is not based on new information (such as a claim construction order in the underlying district court litigation) or in response to arguments that could not have been anticipated by the Petitioner. Further, Patent Owners should emphasize that matters such as claim construction should have been anticipated by the Petitioner and are issues that the PTAB is equipped to assess without further briefing during the pre-institution phase of an IPR.