On August 7, a critical legal precedent was set in the realm of patent law. In the case of Axonics, Inc. v. Medtronic, Inc., the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) must consider an inter partes review (IPR) petitioner’s arguments even if they were made for the first time in its reply brief regarding a claim construction initially proposed in the patent owner’s response brief. This command explicitly compels patent owners to carefully structure their response briefs.Axonics, Inc. v. Medtronic.
USPTO guidelines generally discourage petitioners from raising new arguments in a reply brief. Despite this, the Federal Circuit verdict has revealed an exception to this rule. If a patent owner first proposes a claim construction in their response brief, the petitioner can counteract it for the first time in their reply brief. Consequently, this new precedent from the Federal Court can disrupt any potential tactical patent-owner sandbagging.
Corporate legal teams and law firms need to be aware and prepare for these new considerations in their IPR defense strategies. Moving forward, prudent patent owners might choose to introduce any claim constructions in their initial briefs to circumvent being caught off-guard by unexpected arguments in reply briefs from petitioners.
This case shows that the landscape of patent law remains dynamic and subject to evolution. It underlines the importance of staying alert to the changing legal precedents, especially concerning IPR proceedings. Its implications are undoubtedly relevant and noteworthy for patent practitioners, corporate legal teams, and law firms across the globe.