DK Crown Holdings Inc. v. AG 18, LLC

DK Crown Holdings Inc. v. AG 18, LLC The Federal Circuit affirmed, holding that the Board did not abuse its discretion in refusing to consider DK's reply-footnote request to apply Ground 3 (Bryson + Schlottmann) against claim 18 when the petition never asserted Schlottmann against that claim. The court also rejected DK's collateral estoppel argument that invalidation of claims collectively containing all limitations of claim 18 rendered claim 18 invalid. Reinforces that IPR petitioners are strictly bound by the grounds asserted in the petition—post-institution attempts to add new prior art references against a claim, even via footnote, will not be entertained, and collateral estoppel cannot be manufactured by aggregating limitations from separately invalidated claims. Affirmed DK's IPR petition challenged claim 18 only under Grounds 1 and 2 (Bryson alone); Ground 3 (Bryson + Schlottmann) was directed solely at claims 15–17 in the petition's own summary scorecard. After institution, DK sought in a reply footnote to have the Board analyze claim 18 under Ground 3 'instead of Grounds 1/2'—the Board refused, finding this exceeded proper reply scope by adding a new prior art reference to fill a gap in the petition. The Federal Circuit found no abuse of discretion: the petition contained no cross-reference or indication that Ground 3 or Schlottmann was intended to apply to claim 18, distinguishing Voice Tech Corp. v. Unified Patents (typographical error with substantive cross-reference) on its facts. DK's collateral estoppel theory—that invalidation of claims 10, 12, 15, 16, and 17 collectively covering all limitations of claim 18 estops AG 18 from defending claim 18—was rejected; the Federal Circuit has never applied collateral estoppel by 'cobbling together limitations from disparate claims' to replicate another claim. Opinion is nonprecedential but consistent with and citing precedential authority (Netflix, Inc. v. DivX, LLC; Yita LLC v. MacNeil IP LLC) on the strict petition-scope rule. § 103 § 102 waiver / forfeiture claim preclusion remand non-precedential § 103 § 102 waiver / forfeiture claim preclusion non-precedential waiver / forfeiture claim preclusion non-precedential