Dell Inc. v. Acceleron, LLC.
818 F.3d 1293
| Fed. Cir. | 2016Background
- Acceleron owns U.S. Patent No. 6,948,021 claiming a hot‑swappable network appliance with CPU, power, ethernet switch, a microcontroller, dedicated ethernet path, and caddies for airflow.
- Dell petitioned for inter partes review (IPR) challenging claims as anticipated by Hipp (U.S. Patent No. 6,757,748); Board instituted IPR and held oral argument.
- The PTAB upheld claims 14–17 and 34–36 (relating to a CPU BIOS instructing an NAS to locate an OS for remote boot) but cancelled claims 3 (caddies/airflow) and 20 (microcontroller/dedicated ethernet path).
- Board found Hipp did not disclose a BIOS configured to instruct an NAS to locate an OS (supporting upholding claims 14–17, 34–36).
- For claim 20 the Board adopted a broad construction (dedicated path need only enable polling if microcontroller were so configured) and found Hipp’s I2C bus met the polling element.
- For claim 3 the Board relied solely on a factual contention first raised at oral argument (that unlabeled “slides” in Hipp’s Figure 12 are caddies), which Acceleron had no prior opportunity to rebut.
Issues
| Issue | Plaintiff's Argument (Dell) | Defendant's Argument (Acceleron) | Held |
|---|---|---|---|
| Whether Hipp anticipates claim 14 (BIOS instructing NAS to locate OS for boot) | Hipp discloses web server cards with BIOS, NAS, and network boot capabilities; thus anticipates | Hipp lacks any teaching that the BIOS instructs the NAS to locate an OS to boot the CPU from the NAS | Board affirmed: Hipp does not disclose BIOS instructing NAS; claims 14–17 and 34–36 survive |
| Proper construction of claim 20 (microcontroller "provides ... to remotely poll") | Construction: dedicated path need only permit polling if microcontroller were configured to poll | Construction: microcontroller must be configured to actually perform remote polling | Court: sided with Acceleron — microcontroller must be configured for remote polling; vacated cancellation of claim 20 and remanded |
| Whether Hipp anticipates claim 20 under correct construction | Hipp’s I2C/bus meets polling element under Board’s broad construction | Under correct construction, Dell must show Hipp discloses microcontroller configured to poll; Board made no such finding | Court: vacated Board cancellation and remanded to apply correct construction |
| Whether Board permissibly relied on new factual basis (Hipp "slides") first raised at oral argument to cancel claim 3 | Dell relied on Hipp structures to show caddies (initially door and mounts; later pointed to slides at oral argument) | Reliance on slides raised at oral argument deprived Acceleron of notice and chance to rebut | Court: vacated cancellation of claim 3 for APA / procedural infirmity; remanded for further proceedings |
Key Cases Cited
- Belden Inc. v. Berk‑Tek LLC, 805 F.3d 1064 (Fed. Cir.) (agency must provide patent owner notice and opportunity to respond)
- Nazomi Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339 (Fed. Cir.) (anticipation requires disclosure in the prior art, not user modifications)
- Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir.) (claim construction should give meaning to all claim terms)
- Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir.) (review of broadest‑reasonable‑interpretation claim construction de novo when based on intrinsic evidence)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.) (vacatur and remand appropriate where material factual dispute could not be resolved because of procedural deficiencies)