New Case Theories Post-Institution; Better to Ask Permission

by | Apr 7, 2023 | Final Written Decisions, PTAB Trial Basics

By Christian Roberts and Matt Johnson –

Petitioners should be cautious of introducing a new theory in a Petitioner Reply before the PTAB.  On February 7, 2023, the Patent Trial and Appeal Board (“PTAB”) entered a final written decision declining to find any claims unpatentable in Juniper Networks, Inc. v. Swarm Technology LLC.  IPR2021-01445, Paper 62 (PTAB Feb. 7, 2023).  In its decision, the PTAB explained that Juniper Networks (“Petitioner”) had failed to show that the challenged Swarm Technology (“Patent Owner”) claims were obvious over various prior art references.  Notably, the PTAB refused to consider a Petitioner argument that was, in the PTAB’s opinion, a novel theory improperly raised in a Petitioner’s Reply.

The challenged patent in Juniper (the “’004 patent”) was generally directed to processing architecture involving autonomous co-processors configured to proactively retrieve tasks from a task pool which was populated by a central processing unit.  Petitioner relied on (among others) a printed book reference, “AppleTalkBook,” and a  U.S. patent, “Leong,” to argue the ’004 patent’s claims were obvious under §103(a).  In its response, Patent Owner argued the Petition and its references failed to account for the ’004 patent’s autonomous co-processor subject matter, and therefore failed show the patent’s claims as obvious.  See IPR2021-01445, Paper 21.  Petitioner’s Reply responded to Patent Owner’s arguments by introducing (for the first time) specific teachings in the AppleTalkBook of system “zones” which, in Petitioner’s view, taught the ’004 patent’s autonomous co-processor subject matter.

The PTAB refused to consider Petitioner’s “zone” argument, because “the use of zones. . . [was] a new theory raised for the first time in Petitioner’s Reply.”  IPR2021-01445, Paper 62 at 29.  The PTAB explained it is well-settled that Petitioner’s Reply may only respond to arguments raised in Patent Owner’s Response, citing 37 C.F.R. § 42.23(b).  The PTAB also cited the Trial Practice Guide, saying “Petitioner may not submit new evidence or arguments in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”  Paper 62, citing Patent Trial and Appeal Board Consolidated Practice Guide 73 (Nov. 2019).  The PTAB explained that according to the Trial Practice Guide, “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.”  Paper 62, at 28.  Further, “[w]hile replies and sur-replies can help crystallize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”  Id.  The PTAB went on to point out that the U.S. Court of Appeals for the Federal Circuit has specifically cautioned against considering inappropriately presented arguments and evidence, such as those presented in a Petitioner’s Reply.  Id., citing Intelligent Biosystems, Inc. v. Illumina Cambridge Ltd., 8212 F.3d 1359, 1369-70 (Fed. Cir. 2016).

The PTAB highlighted several important facts which supported classifying Petitioner’s “zone” argument as a new theory.  First, nowhere in the Petition were zones referenced or described.  Second, the Petition failed to reference any pages of the AppleTalkBook that described how a zone operates.  Finally, the Petition failed to give any suggestion that elements in the Petitioner’s other relied upon reference, Leong, should be separated into different zones according to the AppleTalkBook reference.  Altogether, the PTAB found that Petitioner’s “zone” argument constituted an improper new theory, and refused to consider the argument.

Takeaway: The PTAB may refuse to consider new theories raised in a Petitioner Reply, even if the new theory stems from a reference already filed in the Petition.  If required, Petitioners should consider seeking alternative methods of introducing new information or theories to their post-institution case (e.g. a motion to submit supplemental information).

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.