In the recent decision in Securus Technologies, Inc. v. Global Tel*Link Corporation, the Court of Appeals for the Federal Circuit (CAFC) addressed a number of issues, a couple of which are worth noting as potential pitfalls for a Patent Owner in an Inter Partes Review (IPR) proceeding.

Securus is the result of consolidation of two appeals from Final Written Decisions from the PTAB in IPRs stemming from petitions with respect to Patent Owner’s U.S. Patent No. 7,860,222 (“the ‘222 Patent”).  The independent claims at issue in the ‘222 Patent were generally directed to a system (and method) for allowing a user to establish bookmarks at “events of interest” in communications between individuals by searching the communications to identify particular words, and placing event identifiers in association with the identified words.

As one premise for appeal, Patent Owner argued that the PTAB’s conclusion that independent claim 1 was obvious over the prior art impermissibly relied on an argument raised for the first time in Petitioner’s Reply.  In presenting this argument, however, Patent Owner did not argue that such reliance was prejudicial in any way, nor did Patent Owner argue that they were not afforded a meaningful opportunity to respond.  Rather, Patent Owner argued that the PTAB’s reliance was improper simply because Petitioner did not advance the specific argument in its petition.

As one might expect, the CAFC did not find Patent Owner’s argument persuasive since Patent Owner had not shown that the PTAB’s decision rested on any factual or legal argument for which it was denied notice or an opportunity to be heard during the proceedings.  The CAFC also made a point to note that Patent Owner failed to avail themselves to any procedure for filing a sur-reply, motion to strike, or challenging the allegedly improper argument via conference call.

Patent Owner also appealed the PTAB’s denial of motions to amend seeking to change the antecedent basis for six dependent claims.  However, these motions seemed doomed from the start since the Patent Owner admitted numerous times (14 times in two motions) that the changes were not made in response to a ground of unpatentability raised in the IPRs — a specific ground for denial of an amendment set forth in 37 C.F.R. § 42.121(a)(2)(i).

In sum, a couple of swings-and-misses for the Patent Owner who could have spent a bit more time with the PTAB rule book.