Federal Circuit Filters Out Late Argument

Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)

Although the PTAB granted Google's IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.

The non-precedential decision includes an interesting bit on PTAB procedure.  The IPR was instituted on both obviousness and anticipation grounds.  During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art.  Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips "did not have a fair and meaningful opportunity to respond."

On appeal, the Federal Circuit has affirmed -- holding that the "Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review."


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