What Counts as a New Argument in Reply

Apple Inc. v. Andrea Electronics (Fed. Cir. 2020)

After Andrea sued Apple for infringing its U.S. Patent 6,363,345 (noise cancelling audio signal processing), Apple responded with two inter partes review (IPR) petitions.  The PTO initiated both petitions and eventually cancelled all of the claims except 6-9.  Apple then appealed – asking that they all be invalidated.

The invention sets noise-thresholds for a set of frequency groups and subtracts-out amplitude beyond a calculated “future minimum value.”  Claim 6 does this on a periodic basis.

In the original IPR ‘626 petition, Apple argued obviousness of the claims based upon Hirsch over Martin.  In its responsive briefing during the IPR, Andrea argued that Martin does not disclose the “future minimum value” as claimed in claims 6-9.  Then in reply, Apple explained that obviousness becomes clear when seen over multiple periods (sub-windows).  However, the Board refused to consider Apple’s reply – finding that the multiple sub-window argument “raised a new theory of unpatentability for the first time in its reply brief.”

On appeal, the Federal Circuit reversed this holding — concluding instead that the reply brief did not offer a new argument:  “Its reply still asserted that claims 6–9 would have been obvious over Hirsch and Martin [and] relies on the same algorithm from the same prior art reference to support the same legal argument: that Martin
discloses the … “future minimum” limitations of the asserted claims.”  In its decision, the Federal Circuit distinguished prior cases where the reply brief cited to new evidence or new portions of already cited evidence.

  • Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) — reply improperly referenced an embodiment of the prior art not discussed in the petition.
  • Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) — reply improperly cited new non-patent literature references.

The issue here is age-old. A good reply brief should do more than simply rehash the exact statements found in the original brief. At the same time, the reply should not be introducing new arguments that go beyond the original brief.  Consider the following interesting article: John F. Muller, The Law of Issues, 49 Wake Forest L. Rev. 1325 (2014)

On remand, the PTAB will now consider Apple’s reply brief and whether its argument is sufficient to render the claims obvious.

8 thoughts on “What Counts as a New Argument in Reply

  1. 3

    “A good reply brief should do more than simply rehash the exact statements found in the original brief. At the same time, the reply should not be introducing new arguments that go beyond the original brief.”

    This summary appears to be missing the most salient point: “A good reply brief should identify flaws in the party-opponent’s brief and then present arguments to exploit those flaws and refute the defense.”

    “New arguments that go beyond the original brief” are perfectly fine if they are necessitated by new arguments that were raised in the party-opponent’s brief.

    Obvious example: In an ex-parte appeal, the Examiner’s Answer raises new grounds of rejection.

    Somewhat less obvious but similar example: In an ex-parte appeal, the Examiner’s Answer maintains a rejection, but with a different rationale. For example: an examiner (newly) admits that the references in a 103 rejection don’t *directly* teach a particular element, but that the element is inherent, or would be known to PHOSITA, etc. Preventing the applicant from responding to those new grounds would be manifestly unfair.

  2. 2

    Let’s just give Apple sovereign immunity from patent infringement suits. Would save a lot of time and money with the same result.

    1. 2.2

      That is what is happening. The same thing happened with anti-trust and to some degree employment law. The idea is that the businesses have said we need this to compete internationally.

      So the courts give it to them.

    1. 1.1

      This talks about it taking energy to store information and then the theorem is that once created the information has mass.

      This again is illustrating that information processing is a physical process and not as J. Stevens says performed magically by angels, which most of the CAFC judges believe.

    2. 1.2

      And of course then it immediately follows that processing information requires energy.

      But the tyrants at the CAFC believe it is OK to tell us that information processing is not a physical process, but rather something that occurs in the ether.

      A physical machine is required to process information that requires space, time, and energy. The crims at the CAFC are shills for SV.

      1. 1.2.1

        Thor Odinson: “Your Ancestors Called it Magic, but You Call it Science. I Come From a Land Where They Are One and the Same.

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