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Fed Cir: Fairness, Notice of Attack, Right to Reply- Overturned PTAB Decision

The Court of Appeals for the Federal Circuit (“Federal Circuit”) overturned a USPTO Patent Trial and Appeal Board (“PTAB”) decision when the party challenging patent validity (Dell Inc.)  raised, for the first time, an invalidity challenge based upon anticipation the PTAB oral argument.  Dell Inc.  v.  Acceleron LLC, case no.  2015-1513 (Fed.  Cir.  March 15, 2016) (Available Here).  Citing the Administrative Procedures Act (“APA”), the Federal Circuit stated that the USPTO, a government agency, must timely inform the patent owner of matters of fact and law asserted, must provide all interested parties with an opportunity for the submission and consideration of facts and arguments, a hearing and a decision on notice.  Further the party must be able to submit rebuttal evidence as may be required for full and true disclosure of facts.  5 U.S.C. sec.  554(b)()3 and (c) and sec.  556(d).

In this case, patent challenger Dell (the petitioner in the PTAB action) asserted that a certain piece of prior art (Hipp), anticipated and disclosed all claim limitations in a particular patent claim owned by patentee Acceleron and sought to invalidate that patent claim.  Dell’s position had changed three times on this “caddies” claim element.  In its petition, Dell argued that the articulating door in Hipp performs the same function is the patent claim 3’s claim limitation directed to a caddie. In its post institution reply, Dell added an argument that the mounting mechanisms in Hipp constituted a caddie. Finally, at oral argument before the Board, challenger Dell pointed to the structure on the Hipp power supply and argued that this structure was the same as the caddies claim element in patentee’s claim.

Patentee made an oral objection to this new argument (the structure on the Hipp power supply), but the Board dismissed that procedural objection.  The Federal Circuit overturned the PTAB’s decision regarding invalidity by anticipation of that claim owned by patentee.

Further, the Federal Circuit overruled the Board’s decision that ignored the explicit claim limitation calling for a “remotely polling” of computer devices in another of patentee’s claims.  The Federal Circuit requires that basic claim construction principles require that meaning should be giving to all of the claim’s terms.  Reading out the claim limitation to “remotely poll” was legal error.  It was unreasonable to deny effect to the “remotely poll” language which naturally indicates that the microprocessor module is actually configured to communicate in a certain way with other devices.

In the patent specification, the remote polling feature was discussed at three or four different locations.  Therefore, the Board’s claim construction was flawed since it did not account for the remote polling of certain computer related devices by the microprocessor.

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