Federal Circuit: New Invalidity Argument Presented To PTAB For The First Time On Remand From Appeal Is Forfeit – Patent

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The Federal Circuit reversed an obviousness determination from
the Patent Trial and Appeal Board (PTAB) for relying on an argument
raised by the petitioner for the first time on remand. In so doing,
the court held that the petitioner forfeited its new
unpatentability theory because it was responsive to a claim
construction put forth by the patent owner prior to the first

In the first appeal, the Federal Circuit vacated an obviousness
determination by the PTAB when it found the PTAB applied an
incorrect construction of the claim term “grant pending
absent state.” The Federal Circuit then adopted the
construction proposed by the patent owner in its response, and
remanded the case to the PTAB to reconsider obviousness in view of
the proper construction.

On remand to the PTAB, the petitioner reasserted its prior
position that the prior art combination recited all the limitations
of the challenged claims. The petitioner also raised, for the first
time, an alternative theory—that if the second prior art
combination did not disclose a “grant pending absent
state,” it would have been obvious to modify the prior art to
include this limitation. The PTAB accepted this alternative theory
and again found the challenged claims unpatentable. The patent
owner appealed, arguing, among other things, that the
petitioner’s alternative theory was untimely for being raised
for the first time on remand.

On appeal, the Federal Circuit agreed with the patent owner.
According to the Federal Circuit, the particular facts of this case
did not present the petitioner with an opportunity to raise its
alternative theory on remand. Namely, the alternative theory was
responsive to a claim construction position advanced by the patent
owner in its response, i.e., before the first appeal. Thus, the
petitioner was on notice of the possible claim construction
dispute, and should have raised any alternative unpatentability
arguments in its reply to the response. Because the petitioner
failed to do so at that time, it forfeited the opportunity to raise
any such argument on remand.

The Federal Circuit declined to address whether the petitioner
was obligated to raise its alternative theory in its petition
for inter partes review (IPR) for it to be
timely raised because that question was not addressed by the

Practice Tip: This case illustrates the
importance of addressing the potential impact of the opposing
side’s arguments at the first opportunity during an IPR.
Failing to do so may result in forfeiture, as it did here.

Wireless Protocol Innovations, Inc. v. TCT Mobile,
, 2021-2112 (Fed. Cir. 2022) (nonprecedential)

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