Gaps in an AIA Petition Cannot be Fixed Belatedly During Trial

Bylined Articles
Sterne, Kessler, Goldstein & Fox P.L.L.C

Experienced PTAB practitioners know that, in an IPR, assuming each claim element is in the asserted prior art, the rubber meets the road on the reason-to-combine arguments. In Henny Penny Corp. v. Frymaster, LLC, the Federal Circuit once again articulated the importance of getting it right in the petition. In upholding the PTAB’s finding that the challenged claims were not unpatentable, the court relied heavily on 35 U.S.C. § 312(a)(3) which states that the petition must identify “with particularity [] each claim challenged [and] the grounds on which the challenge to each claim is based. . . .” The Federal Circuit reasoned that the PTAB properly held petitioner, Henny Penny Corp., to the obviousness theory articulated in its petition and properly disregarded petitioner’s belated, alternative obviousness theory first advanced in its petitioner’s reply. The court therefore upheld the PTAB’s decision that the claims were not unpatentable. 

In its petition, Henny Penny articulated a straightforward obviousness theory: “to modify the system of [reference A] to include the processor and/or sensor as taught by [reference B].” Slip  Op. at 6. The PTAB then instituted the IPR stating that Henny Penny had articulated sufficient reasons that an artisan would have “modified the teachings of [reference A] by replacing its analyzer with the sensor of [reference B].” Id. (emphasis added). In its patent owner response, however, Frymaster provided technical reasons why such a replacement would have yielded unpredictable and otherwise problematic results.  

Faced with these challenging technical reasons for why its petition’s “replacement” theory would not have worked, Henny Penny shifted gears in its petitioner’s reply and argued that replacement was unnecessary. Instead, Henny Penny argued that the existing sensor in reference A could have been modified to achieve the claimed limitation. Id. Henny Penny’s sole evidence for this new theory came from a supposed deposition admission from Frymaster’s technical expert obtained after Frymaster filed its patent owner response.

Frymaster objected to Henny Penny’s new theory of obviousness. In the IPR’s oral hearing, Henny Penny’s counsel conceded that its petition only advanced an obviousness theory based on swapping the sensors from the two references, not modifying the existing sensor in reference A. The PTAB thus disregarded the new obviousness theory in its final written decision and found the claims not unpatentable.

On appeal, the Federal Circuit upheld the PTAB’s decision to disregard Henny Penny’s petitioner’s reply theory of obviousness. The court stated, “an IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.” Slip Op. at 9 (internal citations omitted).

The Federal Circuit also went on to agree with the Board that under the petition’s original theory of obviousness, substantial evidence supports the PTAB’s finding of no unpatentability, largely crediting Frymaster’s technical arguments from its patent owner response.

This case is also noteworthy because the PTAB found (and Federal Circuit’s upheld) Frymaster’s evidence of industry praise as supporting the patentability of the claims under objective indicia of non obviousness.

Henny Penny adds to a growing body of law that cautions petitioners to fully pressure test their obviousness rationale before they file an IPR petition. They will not be allowed to argue different obviousness theories later in the proceeding. 

This article appeared in the September 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.