by Dennis Crouch
Dell Inc. v. Acceleron, LLC (Fed. Cir. 2018)
In its initial choice, the PTAB cancelled claim 3 of Acceleron’s U.S. Patent No. 6,948,021 (inter alia). That keeping was dependent upon an argument 1st presented by Dell at Oral Arguments (in excess of Acceleron’s procedural objections). The Federal Circuit in 2016 vacated that 1st PTAB choice — “the Board denied Acceleron its procedural rights by relying in its choice on a factual assertion released into the continuing only at oral argument, just after Acceleron could meaningfully respond.” The Federal Circuit discussed:
The agency must well timed advise the patent owner of the issues of point and regulation asserted . . . , must deliver all fascinated get-togethers chance for the submission and thing to consider of information and arguments . . . and listening to and choice on observe, . . . and must allow for a occasion to submit rebuttal evidence as might be demanded for a total and genuine disclosure
of the information.
On remand, the Board rewrote its choice – this time excluding and disregarding Dell’s late argument and consequently acquiring the claim legitimate.
On attraction once again, the Federal Circuit has now affirmed the validity acquiring — keeping that the Board correctly dismissed Dell’s argument – even though the outcome is that we verify the validity of a patent claim that is thought to be invalid. The challenge for Dell is that the procedural guidelines are very clear – “No new evidence or arguments might be presented at the Oral Arguments.” (Office Patent Trial Follow Manual, 77 Fed. Reg. 48,756 (Aug. 14, 2012)).
The primary keeping here is that the PTAB was not demanded to allow for for any re-briefing of the arguments and evidence. In its choice, on the other hand,, the Federal Circuit goes more and states that the Board could not reopen arguments even if had wanted to:
The Board was obligated to dismiss Dell’s untimely argument supplied that the untimely argument in this situation was raised for the 1st time for the duration of oral argument. See, e.g., Wagner v. United States, 365 F.3d 1358 (Fed. Cir. 2004) (“[A]n agency is sure by its restrictions.”) Dell contends that disregarding evidence of unpatentability is against community plan since it will not increase patent quality. We obtain that less than these circumstances, thanks system and preserving the Board’s discretion outweigh any detrimental consequences of not invalidating a patent claim, particularly considering that our choice does not preclude yet another occasion from difficult the validity of claim 3 on the exact foundation.
This final quoted paragraph is probably dicta, but will certainly have the day in just the Board.