Wilt Toikka Kraft LLP


Fresh Arguments Lead to Familiar Unpatentability Result

Following remand from the US Court of Appeals for the Federal Circuit in an inter partes review (IPR) case, the Patent Trial & Appeal Board reviewed the petitioner’s response arguments and evidence concerning claim constructions initially proposed by the patent owner. Despite these, the Board reaffirmed that the claims were not unpatentable in Axonics, Inc. v. Medtronic, Inc., IPR2020-00712; -00680 (May 30, 2024) (Tartal, Jeschke, Dougal, APJ).

Axonics initiated IPR petitions challenging Medtronic’s two patents related to transcutaneous charging of implanted medical devices. Axonics did not propose specific claim constructions in its petitions. Initially, Medtronic concurred that claim construction was unnecessary. However, in its response as the patent owner, Medtronic introduced a novel claim construction differing from Axonics’s implied interpretations. Axonics contested Medtronic’s construction but also introduced new arguments and evidence suggesting prior art anticipated the patents even under Medtronic’s alternative construction.

The Board adopted Medtronic’s new claim interpretation but declined to consider Axonics’s fresh arguments and evidence since they were presented in the reply phase. Consequently, the Board determined Axonics failed to demonstrate by a preponderance of evidence that the challenged claims lacked patentability. Axonics subsequently appealed.

Axonics did not contest Medtronic’s newly introduced claim construction adopted by the Board. Instead, Axonics argued the Board erred in disregarding its reply arguments and evidence under this new construction. The Federal Circuit sided with Axonics, reasoning that in such instances, “a petitioner must be allowed in its reply to argue and present evidence of anticipation or obviousness under the new construction, particularly if relying on the same embodiments for each invalidity ground as in the original petition.” The Court remanded the case for the Board to evaluate Axonics’s new contentions.

DC IP Lawyers Note: If a patent owner introduces a new claim construction in an IPR, the petitioner should have the chance to present fresh arguments and evidence regarding anticipation or obviousness under this new interpretation. However, the Board will assess these new arguments in relation to the petitioner’s initial submissions and may disregard them if they conflict with earlier positions stated in the petition.

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