A PTAB panel acting on a Request for Director Review found that an earlier PTAB panel’s decision that claims 13 and 15 of U.S. Patent No. 10,299,336 were unpatentable was erroneous. The review panel reached that conclusion because the initial panel relied upon arguments first made by the Petitioner in its Reply Brief which were outside the proper scope of a Reply. Luminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 57 (P.T.A.B. Feb. 5, 2026).
PROCEDURAL BACKGROUND
Petitioner filed a petition asking for inter partes review of claims 1-20 of the ’366 patent. The initial panel issued an institution decision finding that, among other things, claims 13 and 15 were obvious from a single reference, Reiff.
Patent Owner subsequently petitioned for Director Review, arguing that the initial panel erred in relying on arguments first presented by Petitioner in its Reply Brief.
DECISION ON REQUEST FOR REVIEW
The review panel analyzed the arguments presented by Petitioner in its IPR Petition. Claim 13 requires a switch comprising a body, an electrical coupling disposed on the body, and an actuator disposed on the body. The Petition argued that claims 13 and 15 were obvious in view of Reiff, which disclosed a tubular light having light sources, an electrical cord, and a control box which includes a switch. Petitioner argued initially that Reiff’s control box was the claimed switch body and that Reiff’s switch was the actuator disposed on the switch body. Petitioner did not specifically identify which element of Reiff disclosed the claimed coupling feature disposed on the body.
The institution decision noted that Reiff did not disclose a coupling feature disposed on the switch body. The Patent Owner in its response additionally argued that Reiff’s control box was not a switch body and need not be coupled electrically to an associated cable.
Responding to these points in its Reply Brief, Petitioner argued that Reiff’s control box houses a slide switch, which has its own body on which a coupling feature is disposed. Petitioner also cited new evidence showing that the construction of slide switches is well known. Finally, Petitioner argued that the “body” required by the claim is represented by the switch body of Reiff, is found within Reiff’s control box, which Petitioner had earlier labeled as the “body”. Petitioner also argued in its Reply Brief that a person of ordinary skill in the art would have understood this body to have a structure that provides the coupling feature. The initial panel agreed with Petitioner’s Reply Brief arguments and found claims 13 and 15 were obvious over Reiff.
The review panel found that the arguments in the Reply Brief constituted a new theory of unpatentability of claim 13 and that the new theory relied on new evidence which was not presented in the initial Petition for IPR. The review panel cited a Federal Circuit decision which explained that a Petitioner can explain in a reply brief how its original position was correct but cannot set out an entirely new theory absent from the petition. Wasica Fin, GmbH v. Cont’l Auto. Sys., Inc. 853 F.3d 1272, 1286-87 (Fed. Cir. 2017). The review panel concluded that because the Petition failed to show that Reiff disclosed a coupling feature disposed on the body, the Petitioner had, absent new argument and evidence presented in the Reply Brief, failed to show by preponderance of the evidence that claims 13 and 15 were unpatentable.
CONCLUSION
A Petition for inter partes review must contain a specific description of the grounds for invalidity and a showing that the prior art discloses each claim element. Generalized statements and arguments that one of ordinary skill would know how to realize a claimed limitation may result in the Petition being found insufficient to support the invalidity argument asserted. In this case, failure to point out where in the prior art each claim element could be found and then later adding that information in the Reply Brief proved fatal to Petitioner’s efforts to invalidate the claims at issue.
Editor’s note: See also an earlier post on a Federal Circuit decision regarding the scope of IPR Reply briefs. Petitioner’s IPR Reply: New Argument or Proper in Scope?