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IP Alert
IP Alert: PTAB Need Not Consider New Arguments Raised for First Time at Oral Argument

March 22, 2018

On March 22, in Dell Inc. v. Acceleron, LLC, the Federal Circuit held that its earlier remand did not obligate the Patent Trial and Appeal Board (PTAB) to consider an argument presented for the first time during oral arguments.

The patent owner, Acceleron, first appealed to the Federal Circuit after the PTAB entered a final decision that, in part, invalidated claims 3 and 20 of the patent at issue. The PTAB’s final decision incorporated an argument first presented by the petitioner, Dell, during oral arguments. Acceleron contended that the PTAB did not provide Acceleron with an opportunity to respond to that new argument. On the first appeal, the Federal Circuit held that the Administrative Procedures Act required that Acceleron have an opportunity to respond. Thus, the Federal Circuit remanded to the PTAB.

Upon remand, the PTAB refused to further consider the argument that Dell had first raised during oral argument. The PTAB therefore entered a final decision finding claims 3 and 20 valid, favoring Acceleron. Dell appealed the PTAB’s remand decision to the Federal Circuit.

Dell argued that the Federal Circuit’s opinion required the PTAB to consider Dell’s new argument. The Federal Circuit disagreed, explaining that its previous remand set forth the procedure that the PTAB would have to follow if the PTAB were to consider Dell’s new argument. However, the Federal Circuit explained that the PTAB was under no obligation to actually consider Dell’s new argument, citing the Office Patent Trial Practice Guide and the Federal Circuit’s decision in Ariosa Diagnostics v. Verinata Health. The Office Patent Trial Practice Guide states that “[n]o new evidence or arguments may be presented at the oral argument,” and in Ariosa, the Federal Circuit held the “[t]he PTAB may control its own proceedings, consistent with its governing statues, regulations, and practice.” Indeed, the court concluded that the PTAB was obligated to dismiss Dell’s untimely argument.

In view of this opinion, parties to inter partes review proceedings should be careful to assert all arguments during briefing, because the PTAB may preclude arguments raised for the first time during oral arguments.

For more information on this holding, please contact Fitch Even partner David A. Gosse or patent agent Thomas A. James, authors of this alert.

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