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Apple Inc. v. Andrea Electronics Corp.

PTAB Abused Discretion By Declining to Consider New Citations in IPR Petitioner’s Reply

Apple Inc. v. Andrea Electronics Corp., __ F.3d __, 2020 WL 593661 (Fed. Cir. Feb. 7, 2020) (Dyk, PLAGER, Stoll) (PTAB) (3 of 5 stars)

Fed Cir vacates IPR decision that Apple had not proved unpatentability for certain Andrea claims, affirms decision that other claims were unpatentable as anticipated/obvious. Andrea’s patent relates to the use of Fourier transforms for noise cancellation and reduction. The Board abused its discretion by determining that certain arguments in Apple’s reply brief raised a new theory of unpatentability justifying a decision not to consider them. Discussing Ariosa Diagnostics, 805 F.3d 1359 (Fed. Cir. 2015), Intelligent Bio-Systems, 821 F.3d 1359 (Fed. Cir. 2016), and Chamberlain, 944 F.3d 919 (Fed. Cir. 2019), the opinion describes how Apple’s reply arguments, though pointing to part of a reference not addressed in its petition, was “merely demonstrat[ing] another example of the same algorithm” to support its case. “It is unreasonable to hold petitioners to such a high standard that, if they choose to rely on one example of an algorithm, they must either discuss all potential permutations of the variables or risk waiving the opportunity to further discuss other relevant examples in their reply.” Op. at 16. The opinion also notes that Apple’s arguments were responsive to arguments in the Patent Owner Response.

The Board correctly construed a certain term based on its use in the patent. Though the term “periodically” may sometimes mean “from time to time,” the patent was clear that in this context it required regular intervals of time.

The opinion then describes how the Board did not commit reversible error in the arguments it considered—though on remand it must consider the Apple reply arguments it previously declined to take up.

KEYWORDS: INTER PARTES REVIEW; WAIVER; OBVIOUSNESS; CLAIM CONSTRUCTION