Arguments not raised in an opening brief will generally be considered to have been waived.
Background / Facts: The reexamination application on appeal here from the PTAB is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. During reexamination, the patentee sought to antedate a prior art reference by submitting “a signed Declaration [u]nder 37 CFR. § 1.131 by the patentee which swears behind the publication date December 16, 1996 of [the reference].” Subsequently, however, after the PTAB found the declaration to be insufficient for failing to establish the reduction to practice alleged, the patentee requested rehearing on the grounds that there was in fact no evidence that the reference was actually published on December 16, 1996.
Issue(s): Whether the publication date issue advanced in the petition for rehearing was properly raised on appeal.
Holding(s): No. “Our law establishes that a patentee cannot advocate one position during reexamination, and then, when that position has been accepted by the PTO, reverse its position on appeal. … The Board did not err in construing PTO Rule 41.52(a)(1), like our own appellate rules, to require that a party’s arguments be raised in the opening brief. Here, [the patentee’s] Board Response Brief not only raised a new argument, it contradicted the Board Appeal Brief without any explanation for the abrupt change in position.”