Processing All Things Federal Circuit
September 15, 2023 - Last Week in the Federal Circuit

Recently in the Federal Circuit: The New Board Construction Conundrum

Medical Equipment

If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also sheds light on a petitioner’s options when the Patent Trial and Appeal Board adopts a patent owner’s new claim construction after institution.

Case of the (recent-ish) week:  Axonics, Inc. v. Medtronic Inc., Nos. 2022-1532, 1533 (Aug. 7, 2023)

Panel: Judges Lourie, Dyk, and Taranto, with Judge Dyk writing the opinion

You should read this case if: you have a matter involving a new claim construction adopted after institution in an inter partes review.

Axonics petitioned the Board to review claims of two patents on transcutaneous (i.e., through-the-skin) charging of implanted medical devices. In its petitions, Axonics applied an implied construction of two “wherein” clauses, treating the clauses as requiring only a single input. The patent owner and the Board used that implied construction during the institution phase of the IPR. 

Post-institution, the patent owner took a new tack. It argued the claims required two inputs, not merely one. It urged the Board to uphold the claims because the petitions failed to identify two separate inputs in any of the prior art references. In reply, Axonics defended its one-input construction. Even so, it also argued the petition-asserted prior art would satisfy the patent owner’s new two-input construction. Axonics supported that argument with a supplemental expert declaration. And although it continued to point to the same embodiments of the same prior art for its patentability challenges, it cited additional disclosures beyond those cited in its petitions.

In the final written decisions, the Board adopted the two-input construction. Yet it refused to consider Axonics’ arguments and evidence under that construction because those arguments and evidence had not been included in the petitions.

The Federal Circuit vacated and remanded. “[B]efore the Board decides a case under a construction adopted after the institution decision, it must give a petitioner an opportunity to respond to the new construction, whether that construction was first proposed by the patent owner or the Board.” That was so even if the petitioner relied on evidence and citations to the prior art absent from the petition, “at least where [the petitioner] relies on the same embodiments for each invalidity ground as were relied on in the petition.” The Court distinguished that situation from one where a petitioner’s reply relied on new prior art to teach a claim limitation, which past decisions had prohibited. The Court also left for another day the question whether, in response to a new claim construction, a petitioner could rely on new embodiments from the petition-presented prior art.

Because the Board never gave Axonics the opportunity to present argument and evidence under Medtronic’s new construction, the Court remanded for the Board to consider the merits of Axonics’ arguments and evidence under that construction.