Arguments Raised for First Time at Oral Argument Not Waived When Responsive to New Arguments Raised by Petitioner in Reply Brief

In Chamberlain Group, Inc. v. One World Technologies, Inc., No. 2018-2112 (Fed. Cir. Dec. 17, 2019), the Court addressed whether the Patent Trial and Appeal Board acted appropriately in disregarding an argument raised for the first time at the oral hearing.

In disputing the proper construction of a claim term in an inter partes review, the petitioner, One World, advanced a new argument for its claim construction for the first time in its reply brief.  The patent owner, Chamberlain, responded to that argument at its first possible opportunity: the oral hearing.  In the final written decision, the Board held that Chamberlain had waived its argument because the argument was not briefed and, per the Trial Practice Guide, new evidence or arguments may not be presented at the oral hearing.

The Federal Circuit disagreed.  The Federal Circuit viewed Chamberlain’s argument as a clarification of arguments made in its response brief because the arguments were responsive to One World’s reply and tracked the arguments in its response.  Because this clarification did not amount to a new issue or argument, the Federal Circuit determined that Chamberlain had not waived the argument.