Docket Nos. 2015-1513, -1514
MOORE, TARANTO, HUGHES
March 15, 2016
Brief Summary: PTAB confirmation of claims claims 14-17 and 34-36 of Acceleron’s US 6,948,021 as not anticipated affirmed; cancellation of claims 3 (“that the Board denied Acceleron notice and a fair opportunity to respond”) and 20 (“[t]he Board’s construction runs counter to the claim-construction principle that meaning should be given to all of a claim’s terms”) vacated.
Summary: Dell appealed PTAB confirmation (after IPR) of claims 14-17 and 34-36 of Acceleron’s US 6,948,021 related to “hot-swappable components” of a computer-network appliance. Acceleron appealed Board’s cancellation of claims 3 and 20 of the ‘021 patent as anticipated and its claim construction. Regarding anticipation of claim 14, the FC panel concluded “the Board had ample evidence to find [the] facts not to be enough to meet the key claim 14 requirement at issue” (expert testimony, explicitly or implicitly (“For anticipation purposes, the absence of such a teaching makes it immaterial whether, as Dell contends, a user of the Hipp system could modify the system to activate such remote booting.” Nazomi, FC 2014)). The Board’s determination of no anticipation of claim 15-17 was affirmed (“Dell did not meaningfully present a challenge to claim 15 separate from its claim 14 challenge…And because claims 16 and 17 depend on claim 15, they too are not anticipated.”) And its determination that claims 34-36 would not have been obvious was also affirmed (“Before the Board, Dell did not develop an argument for the invalidity of claims 34-36 separate from its arguments concerning claims 14-17.”) Regarding claim 20, Acceleron argued it “can only be reasonably construed to require that the microcontroller module actually be configured for remote polling” and the FC panel agreed finding that “[t]he Board’s construction runs counter to the claim-construction principle that meaning should be given to all of a claim’s terms” (Bicon, FC 2006) and “is unreasonable” (e.g., “Claim 22, which depends on claim 20, supports (without unambiguously demanding) [that] requirement…” and the specification also supports this view.) The FC panel also concluded “that the Board denied Acceleron notice and a fair opportunity to respond to” its reasoning regarding cancellation of claim 3 since it “was first identified…during the oral argument before the Board” (“It was only at oral argument before the Board that Dell pointed to the structure on which power supplies 280 rest in Hipp’s Figure 12 as meeting the ‘caddies’ requirement of claim 3. Acceleron was given no prior notice of that contention. The oral argument presented no opportunity for Acceleron to supply evidence….”) The Board’s cancellation of claim 3 was therefore vacated since “Dell has not shown in this court that there can be no genuine factual dispute on that issue” (Ariosa Diagnostics, FC 2015).
Federal Circuit summaries 