In Apple Inc. v. Andrea Electronics Corp., [2018-2382, 2018-2383] (February 7, 2020), the Federal Circuit vacated the Board’s decision in a first IPR on U.S. Patent No. 6,363,345 because the the Board erred in refusing to consider Apple’s reply arguments. In the second IPR on the patent, however, the Federal Circuit affirmed the determination that claims 5-9 were not invalid.

The Board’s determinations that a party exceeded the scope of a proper reply are reviewed for abuse of discretion. The Federal Circuit said that a reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response. Thus, it had to determine whether the petitioner’s reply brief was responsive to arguments originally raised in its petition, or whether the reply arguments are responsive to arguments raised in the patent owner’s response brief.

The Federal Circuit noted that Apple’s legal ground did not change in its reply — its reply still asserted that claims 6–9 would have been obvious over the same references. Further, Apple’s arguments were not the types of arguments that it had previously found to raise a “new theory of unpatentability.” The Federal Circuit noted that Apple’s reply does not cite any new evidence or unidentified portions of the references, but merely demonstrated another example of the same algorithm to further explain why the reference discloses the claim elements.

The Federal Circuit said that parties are not barred from elaborating on their arguments on issues previously raised, and concluded that Apple’s reply squarely responds to the Patent Owner Response.