New Case Theories Post-Institution; Better to Ask Permission, PTAB Litigation Blog

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Petitioners should be cautious of introducing a new theory in a Petitioner Reply before the PTAB.  On February 7, 2023, the Patent Trial and Appeal Board (“PTAB”) entered a final written decision declining to find any claims unpatentable in Juniper Networks, Inc. v. Swarm Technology LLC.  IPR2021-01445, Paper 62 (PTAB Feb. 7, 2023).  In its decision, the PTAB explained that Juniper Networks (“Petitioner”) had failed to show that the challenged Swarm Technology (“Patent Owner”) claims were obvious over various prior art references.  Notably, the PTAB refused to consider a Petitioner argument that was, in the PTAB’s opinion, a novel theory improperly raised in a Petitioner’s Reply. 

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