PTAB Not Required to Consider New Evidence or Arguments at Oral Argument

PTAB Not Required to Consider New Evidence or Arguments at Oral ArgumentDell Inc. v. Acceleron, LLC, No. 2017-1101, 2018 (Fed. Cir. Mar. 19, 2018) (Before Moore, Reyna, and Taranto, J.) (Opinion for the court, Reyna, J.)

The Board instituted inter partes review of Acceleron’s ‘021 patent based on anticipation by the Hipp ‘748 patent. Acceleron’s patent is directed to a computer network appliance containing hot-swappable components that can be removed and replaced without having to reset or turn off the computer system as a whole. In its petition, Dell argued that the articulating door disclosed in Hipp taught the “caddies” limitation in claim 3 of the ‘021 Patent, the only claim at issue in the appeal. Acceleron argued that claim 3 recites multiple caddies and Hipp only discloses a single caddie. At oral argument, Dell argued for the first time that the “slides” disclosed in Hipp satisfy the “caddies” limitation. The Board overruled Acceleron’s objection to Dell’s argument as untimely and held that claim 3 was anticipated by Hipp, relying exclusively on Dell’s argument regarding the “slides” in Hipp.

Both parties appealed. Acceleron argued that the Board violated the Administrative Procedure Act by not giving Acceleron an opportunity to fairly confront Dell’s “slides” argument. The Federal Circuit vacated the Board’s decision and remanded for appropriate proceedings. On remand, the Board decided not to consider Dell’s untimely “slides” argument. It found that claim 3 was not anticipated, based on Dell’s previous argument that Hipp’s the articulating door satisfied the “caddies” limitation.

Dell appealed, arguing that the Board should have considered its “slides” argument and given Acceleron an opportunity to respond. Failure to consider the new “slides” argument was alleged to contradict the Court’s remand order and its precedent in In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) and SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016).

In its remand order, the Court stated that the Board “must timely inform the patent owner of the matters of fact and law asserted . . . must provide all interested parties opportunity for the submission and consideration of facts and arguments . . . and hearing and decision on notice . . . and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure of the facts.” The Court did not order the Board to consider Dell’s new argument and Acceleron’s response. It set out the appropriate procedure for the Board to apply if it did decide to consider the new argument.

The Court’s precedent likewise did not support Dell. Under NuVasive, if the Board relies on prior art that was not included as a basis of non-patentability before the patent owner response was filed, the Board must provide an opportunity to respond. In SAS Institute, the Court directed the Board, on remand, to provide the parties with an opportunity to present new evidence and argument because the Board adopted a new claim construction in its final written decision. Neither decision required the Board to consider Dell’s new argument and Acceleron’s response. To the contrary, Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) and the PTO’s guidelines supported the Board’s decision to not consider evidence or arguments presented for the first time at oral argument. The Court affirmed the Board’s determination that Hipp did not anticipate claim 3.

Take Away

The Board is not compelled by Federal Circuit precedent or PTO guidelines to consider arguments and evidence presented for the first time during oral argument. However, if the Board does consider new arguments or evidence, the responding party must be given an opportunity to submit rebuttal arguments and evidence.

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