Background
The case involved an inter partes review of United States Patent Number nine million nine hundred seventy-eight thousand two hundred five. The Patent Trial and Appeal Board found most claims unpatentable but upheld claim eighteen. The petitioner, DK Crown Holdings Inc., sought to analyze claim eighteen under a third ground of unpatentability relying on a reference called Schlottmann, which was not asserted against that specific claim in the original petition. The Board rejected this request as exceeding the scope of a reply brief.
The court’s reasoning
The court held that the Board did not abuse its discretion by rejecting the new argument. The petitioner’s petition did not assert the third ground against claim eighteen, and the reply footnote was not responsive to the patent owner’s arguments. The court also rejected the collateral estoppel argument, noting that precedent does not allow combining limitations from disparate claims to establish invalidity for a single claim.
We therefore find no abuse of discretion.
What it means going forward
This decision reinforces the strict procedural boundaries of inter partes review, preventing petitioners from introducing new grounds of unpatentability in reply briefs to cure omissions in their original petitions.
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