Federal Circuit Summary

Before Moore, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: A party in an int er partes review proceeding may not present new evidence or arguments at oral argument.

The Board instituted inter parte s review of Acceleron’s patent based on Dell’s petition. At oral argument, Dell raised an entirely new argument regarding the disclosure of the prior art. Acceleron objected that Dell’s argument was not timely, but the Board denied Acceleron’s objection. Further, the Board relied exclusively on Dell’s new argument and found one claim anticipated. In a first appeal, the Federal Circuit remanded, stating that “The agency . . . must provide all interested parties opportunity for the submission and consideration of facts and arguments . . . and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure of the facts.” On remand, the Board decided not to consider Dell’s new argument and found the claim at issue valid. Dell appealed the Board’s decision.

The Federal Circuit affirmed. The court explained that its remand order “does not mean . . . that we ordered the Board to consider Dell’s new argument and Acceleron’s response.” The court distinguished the present case from its prior SAS decision where the Board adopted a “new, and ultimately correct” claim interpretation in its final written decision after “chang[ing] theories in midstream” with no notice. In SAS, the Federal Circuit directed the Board to allow the parties to present evidence and argument. The court also observed that the PTO guidelines prohibit parties from presenting new evidence or arguments at the oral argument before the Board. Thus, the Board was obligated to dismiss Dell’s untimely argument.

This case is: Dell Inc. v. Acceleron, LLC

Written by: Baraa Kahf and Ari Feinstein

Edited by: Paul Stewart