Elaborating on Arguments After IPR Institution
Matthew Thompson
Two recent decisions from the Federal Circuit are defining the boundaries of elaborating on arguments after institution of inter partes review (IPR). Typically, petitioners “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” U.S. Patent Trial and Appeal Board, Consolidated Trial Practice Guide 73 (Nov. 2019). However, a petitioner is allowed to “respond to arguments raised in the corresponding opposition patent owner preliminary response, or patent owner response.” 37 C.F.R. § 42.23(b). The question taken up by the Federal Circuit in these two cases is whether or not such a response may contain claim construction or motivation to combine arguments asserted for the first time in a petitioner’s reply to a patent owner’s response that elaborate on previous arguments, without violating the prohibition on new arguments. These two cases do not obviate the prohibition on new arguments. Rather, they clarify that a petitioner’s right to “respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution” includes the ability to elaborate on claim construction or motivation to combine arguments without violating the prohibition on new arguments. 37 C.F.R. § 42.23(b).
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Federal Circuit Scrutinizes PTAB Decision on Secondary Considerations
Robert Maier, Stephen O'Donohue
This article covers the decision in ‘Volvo Penta of the Americas v. Brunswick’ and how it not only reinforces the advantages of drafting patent claims that cover the patentee’s own products, but also shines light on the importance of diligently seeking discovery in competitor patent disputes to present evidence regarding secondary considerations of non-obviousness.
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This article was previously published in the New York Law Journal on September 26, 2023.

September 2023 Intellectual Property Report Recap
In case you missed it, here is a video recap of our September 2023 Intellectual Property Report that looked at:

• Does a License to "Make" a Patented Product Inherently Include a Right to Have a Third Party Make the Product or its Components
• Disclosure of Third-Party Litigation Funding Arrangements: An Overview of Recent Decisions From Top Patent Venues
• Fast German Trademark Registrations Support BIMI Branded Email Campaigns
• How Patents Can Provide Additional Revenue Streams for Houston Innovators
• Biden Administration Take First Step in Regulating U.S. Outgoing Investments into China
• Companies Should Exercise Caution in Describing Pending Litigation as "Without Merit"

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