October 06, 2022
CAFC Finds IPR Petitioner Forfeited Obviousness Argument
In a second appeal arising from inter partes review of U.S. Patent No. 8,274,991, the Federal Circuit found that the petitioner forfeited an obviousness argument that it failed to raise in its reply to the patent owner’s response.
In the first appeal, the Federal Circuit adopted a claim construction consistent with a construction offered in the patent owner’s response, vacated the Board’s obviousness finding, and remanded to the Board for reconsideration.
On remand, the Board permitted the petitioner to raise a new obviousness argument because, in its view, the Federal Circuit’s construction on appeal was “neither proposed nor addressed by either party during the trial.”
The Federal Circuit disagreed. In the second appeal, the Federal Circuit found that its claim construction “in no way departed from” the understanding of the claim expressed in the patent owner’s response and, therefore, the petitioner was on notice of its new obviousness argument at least as of the date of the patent owner response. The Federal Circuit concluded that the petitioner “needed to at least try to raise [the] argument for the Board’s consideration no later than its reply, rather than wait until the case returned on remand.” By failing to do so, it forfeited the argument.
