Docket No. 2017-1101 (IPR2013-00440)
MOORE, REYNA, TARANTO
March 19, 2018
Brief summary: FC panel concluded PTAB was not required to considered Dell’s new evidence presented for the first time at oral argument, and PTAB decision that Hipp does not anticipate ‘021 claim 3 was affirmed.
Summary: Dell appealed from PTAB’s remand determination during IPR of Acceleron’s US 6,948,021 “directed to a computer network appliance containing a number of hot-swappable components” (e.g., “caddies”). In the underlying IPR proceeding, the PTAB “relied on new argument and evidence presented by Dell for the first time at oral argument, without providing Acceleron, LLC, an opportunity to respond.” Both parties appealed that decision, which was remanded (Dell I, FC 2016). The PTAB then “declined to consider both Dell’s new argument and Acceleron’s proposed response.” Dell argued in this appeal that the PTAB “was required…to consider both Dell’s new argument and Acceleron’s response.” During IPR, Dell relied on the Hipp reference as disclosing “the caddies recited in claim 3 of the ‘021 patent” but “Acceleron argued that ‘the claim recited that the single chassis comprises multiple caddies,’ while Hipp ‘includes only a single articulating door 262.” Dell replied “that the mounting hardware for the box fans are ‘caddies,’in the sense that they are carriers for the fans and that the ‘two popwer supply mounting mechanisms 278’ are also considered ‘caddies.’” At the subsequent oral argument before the Board, Dell for the first time argued that ‘slides,’ on which power supplies 280 rest, meet the ‘caddies’ requirement of claim 3” and Acceleron argued this was procedurally improper. The Board denied Acceleron’s objection and “found claim 3 to be anticipated by Hipp, relying exclusively on Dell’s new argument about the ‘slides’ structure of Hipp.” Following remand from Dell I, the PTAB did not consider Dell’s “‘slides’ argument presented at oral argument or in Dell’s Reply because the argument was new and non-responsive to Acceleron’s Response.” The FC panel did not find error with the PTAB’s decision, distinguishing this case from SAS (FC, 2016) in which the PTAB “changed theories in midstream” regarding claim construction and NuVasive (FC 2016) in which it “noted the need for an adequate opportunity to respond if the Board chose to rely on a portion of a prior art reference that was not mentioned as a basis for unpatentability before the patent owner’s response was filed” but “did not require the Board on remand to admit new evidence in response.” Thus, the FC panel “disagree[d] that NuVasive and SAS compelled the Board to consider the new evidence in this instance” (“the PTO guidelines provide that ‘[n]o new evidence or arguments may be presented at the oral argument”; Ariosa (FC 2015) (“We do not direct the Board to take new evidence, or, even, to accept new briefing.”); Wagner, FC 2004 (“[A]n agency is bound by its regulations.”)) Thus, the PTAB was not required to considered Dell’s new evidence and its decision that Hipp does not anticipate ‘021 claim 3 was affirmed.