The CAFC’s recent decision in Arioso Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015) contains some worthwhile reminders for IPR Petitioners. First, it confirms the role of “background art” in a Petition: Such “art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.” Arioso Diagnostics, Slip Opinion at 11 – 12. The Court said that it would be an error for the Board to ignore such background art, and to focus solely on references specifically cited in the proposed grounds for invalidity. But if the Petitioner wants to avail itself of background art for this purpose, it must specify the relevance of the background art in the Petition. Id. at 12. It is not enough for the Petitioner to merely submit background art into evidence: The Board can choose to give no weight to such evidence if the Petition neglects to offer an explanation of its relevance. Id. at 12.
This touches on a broader theme in the opinion - that IPR procedure is designed to promote speed and efficiency. This is why the regulations require Petitioners to “make [their] case” in their Petition, and why reply papers are “limited to a true rebuttal role” and may not be used to cure defects in the opening papers. Id. at 15. For example, the Court saw no error in the Boards’ decision to reject “Ariosa’s reliance, in it Reply submissions, on previously unidentified portions of a prior-art reference.” Id. at 16. To emphasize this point, the Court acknowledged that the speed of an IPR might sometimes come at the expense of the merits:
That burden [of proof], together with the procedural rules impartially applied, means that, in some cases, a challenge can fail even if different evidence and arguments might have led to success. Id. at 15.
The CAFC continued this theme in its instructions to the Board on remand. It noted that the delay inherent in any remand creates tension with Congress’ mandate that IPR proceedings be complete within a year, and with the overall “statutory goal of providing a relatively quick and low-cost alternative to litigation over validity.” Id. at 15. The Court said the choice of procedure on remand was entirely in the Board’s discretion, stating “we do not direct the Board to take any new evidence or, even to accept new briefing.” But the Court clearly indicated a preference for speed when selecting a scope for remand proceedings.