IPR Petitioner’s Post-Institution Theories Differing from Those Raised In Petition May Be Disregarded

In Henny Penny Corp. v. Frymaster LLC, No. 2018-1596 (Fed. Cir. Sep. 12, 2019), the Federal Circuit held the Board did not abuse its discretion in rejecting a petitioner’s obviousness theory raised for the first time in reply.

HPC filed an IPR petition challenging Frymaster’s patent related to measuring cooking oil degradation in a deep fryer. In its petition, HPC argued a POSA would have been motivated to incorporate a sensor disclosed in a secondary reference into a primary reference. In reply, it instead argued it would have been obvious to use the sensor already disclosed in the primary reference for a different purpose based on general teachings in the secondary reference. The Board held the latter was a new obviousness theory improperly raised for the first time in reply and disregarded it. It then determined the claims were nonobvious because a POSA would not have been motivated to incorporate the sensor from the secondary reference into the primary reference. And the Board found secondary considerations supported its determination.

The Federal Circuit held that the Board did not abuse its discretion in rejecting HPC’s reply argument, stressing that a petitioner cannot raise a new rationale in reply that it failed to first raise in the petition. The Court then affirmed the Board’s nonobviousness determination.