In Securus Techs. v. Global Tel*Link Corp., the Federal Circuit rejected the propriety of complaining about issues raised for the first time in a petitioner reply, when the patent owner did not object during the IPR proceeding.
In Securus, the Federal Circuit reviewed a pair of final written decisions involving U.S. Patent No. 7,860,222. The claims of the ‘222 patent describe investigative tools and communication monitoring that including such features as:
an investigative tools module in communication with said communication service module operable to allow a user to monitor said communications between individuals and to place event identifiers in association with said communications between individuals, said event identifiers comprise a plurality of bookmarks representing different events of interest …
Or, as more succinctly described by the Federal Circuit, “a system and method for reviewing conversation data for certain events and noting when something of interest happens.”
In two IPR decisions, the Board found all claims unpatentable. In affirming the unpatentability of some claims, the Federal Circuit rejected Securus’ argument that the Board erred in considering arguments raised by Global for the first time in its reply. In doing so, the Federal Circuit took Securus to task for not raising this objection during the IPR proceeding.
Moreover, it is incumbent upon the party complaining of some procedural violation—such as the inclusion of improper rebuttal in a reply brief—to first raise the issue below. … Securus presents no evidence that it availed itself of the procedures for filing a sur-reply, a motion to strike, or a conference call to challenge this allegedly improper argument.
The Federal Circuit also reversed and remanded as to some claims because the Board “failed to articulate any reason supporting its decision.” Referring to its past decisions in Nuvasive and Cutsworth, the Federal Circuit again indicated that “it is not adequate [for the Board] to summarize and reject arguments without explaining why the [Board] accepts the prevailing argument.” Whether this will affect the Board’s prior finding of unpatentability of these claims remains to be seen. Although such reversals result in new decisions by the Board, they rarely result in new outcomes.