It is a key principle of Inter Partes Review proceedings that a Patentee’s Response may not exceed the scope of a Petitioner’s Petition, and in turn, that the Petitioner’s Reply may not exceed the scope of the Patentee’s Response.  37 C.F. R. 42.23.

Recently, the Patent Trial and Appeal Board (PTAB) provided guidance on what, if anything, a party should do if it believes that the opposing party has violated this fundamental rule.  Further, the PTAB underscored the consequences of such violations.

In consolidated cases IPR2013-00401 and IPR2013-00404, The Board of Trustees of the University of Illinois (the “University), owner of US Patent No. 5,527,533 (“Method of retarding and ameliorating central nervous system and eye damage“), sought guidance from the PTAB regarding the proper way to challenge the Reply of the Petitioner, Cyanotech Corporation, as allegedly exceeding the scope of the University’s Response. 

For a bit of context, Claim 1 of US Patent No. 5,527,533 recites: “A method of treating an individual suffering from retinal damage or retinal disease, said method comprising administering a therapeutically effective amount of astaxanthin to the individual to improve the vision of the individual.”

In an email to the PTAB seeking guidance on how to proceed, the University noted that Cyanotech originally argued in its Petition that the claims in question are inherently anticipated because vitamin A has been shown to be an antioxidant that prevents free radical damage in the eye. The email asserts that in the Reply, however, Cyanotech abandoned the original arguments for inherent anticipation and instead put forth the notion that a lack of vitamin A causes cells in the eye to die, and the body’s method of metabolizing the dead cells generates free radicals that damage the eye.

In a June 6, 2014 Order on the conduct of the proceeding, Administrative Patent Judge Scott E. Kamholz wrote that the issue of whether Cyanotech’s Reply exceeded the proper scope of reply will be addressed when the PTAB is preparing the final written decisions for the cases. That is, the Order declined to authorize the University to file any sort of challenge to Cyanotech’s Reply and explicitly denied the University the opportunity to raise the issue in a motion to exclude. However, the Order stated that the University may raise the issue during oral argument. 

Additionally, the Order warned that if the PTAB determines that any portion of a Reply raises any new issues or belatedly introduces new evidence, the PTAB may ignore the entire Reply when preparing its final written decision.   Responders beware.