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A recent precedential case highlights the thorny issue of what constitutes a fair response to new claim constructions following an institution, says Blair Jacobs of McKool Smith.
In Axonics v Medtronic, the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) erred by adopting a claim construction first presented in the patent owner’s response after the institution decision, and refusing to consider the petitioner’s reply arguments and evidence under the new claim construction.
Axonics petitioned for an inter partes review (IPR) of the two patents and appealed the PTAB’s decision finding that Axonics had failed to show the asserted claims were unpatentable.
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Axonics, Medtronic, Federal Circuit, PTAB, McKool Smith, patent owners, IPR