Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1532, -1533 (Fed. Cir. Aug. 7, 2023)
In this week’s case of the week, the Federal Circuit re-affirmed existing precedent that in inter partes review proceedings before the Patent Trial and Appeal Board, a petitioner must be permitted to respond to any new claim construction proposed by the patent owner or by the Board following institution of proceedings. Consistent with that precedent, the Court further held that where a patent owner advances a new claim construction in its Patent Owner Response, a petitioner must be permitted to present arguments and evidence of unpatentability under that construction in its reply, at least where the petitioner relies on the same prior art embodiments relied on in its Petition.
The case involved two patents owned by patent owner/appellee Medtronic and directed to transcutaneous charging of implanted medical devices. As relevant to the appeal, the challenged claims included limitations requiring an external power source to vary its output “based on a value associated with  current passing through” the implanted device, and also limitations requiring the same output variance “based on a measured current” or other specific value associated with the current passing through the devices.
Rembrandt Diagnostics, LP v. Alere, Inc., Appeal No. 2021-1796 (Fed. Cir. Aug. 11, 2023)
Also this week, in affirming a Patent Trial and Appeal Board decision that Rembrandt’s Patent No. 6,548,019 was unpatentable for obviousness, the Federal Circuit further addressed what counts as impermissible “new theories” in a petitioner’s reply brief.
Rembrandt had sued Alere for infringement of the ‘019 patent, which was directed to test assay devices and methods for testing biological fluids. Alere petitioned for inter partes review, which was instituted, decided, appealed, and remanded. On remand, after Rembrandt’s patent owner’s response, Alere filed a reply brief raising three additional prior art combinations as grounds for obviousness. On a second appeal to the Federal Circuit, Rembrandt specifically objected to one of those combinations as being a “new theory” impermissible on reply, and more broadly that Alere “resort[ed] to new theories in reply.”