884 F.3d 1364
Fed. Cir.2018Background
- Acceleron owns U.S. Patent No. 6,948,021 (the ’021 patent) claiming a chassis with multiple hot‑swappable modules and caddies that provide front‑to‑rear airflow; claim 3 requires that the chassis "comprises caddies providing air flow from the front to the rear of the chassis."
- Dell petitioned for inter partes review (IPR) relying primarily on prior art Hipp, arguing it anticipated claim 3; Dell identified Hipp’s articulating door as corresponding to the claimed caddies.
- At the Board oral argument, Dell for the first time argued that Hipp’s "slides" (power‑supply slides) are "caddies;" Acceleron objected and sought an opportunity to rebut, but the Board denied the request and relied on Dell’s new oral‑argument theory to cancel claim 3.
- On appeal (Dell I), the Federal Circuit vacated cancellation of claim 3 and remanded because the Board had relied on factual assertions first introduced at oral argument without giving Acceleron a meaningful chance to respond.
- On remand the Board declined to consider Dell’s belated "slides" argument (or any new evidence) and reexamined Hipp only on the previously raised articulating‑door theory, concluding Hipp did not anticipate claim 3 because Hipp discloses a single articulating door rather than multiple caddies.
- Dell appealed again, arguing the Board on remand was required to consider its new argument and allow Acceleron to respond; the Federal Circuit affirmed, holding the Board did not abuse its discretion in excluding the untimely oral‑argument evidence and that substantial evidence supports the Board’s finding that Hipp does not anticipate claim 3.
Issues
| Issue | Plaintiff's Argument (Dell) | Defendant's Argument (Acceleron/Board) | Held |
|---|---|---|---|
| Whether the Board on remand was required to consider Dell’s new "slides" argument raised first at oral argument | The Board must consider the argument on remand and allow Acceleron to rebut; prior remand and precedent require consideration of potentially invalidating evidence | The argument was untimely (first raised at oral argument) and the Board properly excluded new evidence per its procedures and PTO practice | Held: Board not required to consider the untimely oral‑argument evidence; exclusion was within its discretion |
| Whether the Board violated due process by not giving Acceleron an opportunity to respond to the "slides" theory on remand | Dell: Remand required the Board to admit the new theory and allow both sides to present evidence/argument | Board/Acceleron: Dell introduced the theory late; remand did not compel acceptance of new evidence or briefing | Held: No due‑process violation; remand set procedures if Board relied on new matter, but did not mandate admission of untimely evidence |
| Whether prior Federal Circuit decisions (NuVasive, SAS) compel admission of new evidence on remand | Dell: NuVasive and SAS require admission or reconsideration of new reference portions on remand | Board: Those precedents do not compel admission here; those cases involved different circumstances (e.g., new claim construction or reference portions identified earlier) | Held: Precedents do not force admission; Board discretion applies and oral‑argument restrictions and PTO practice permit exclusion |
| Whether Hipp anticipates claim 3 under the Board’s considered record (excluding slides) | Dell: Hipp’s articulating door and associated structures correspond to claimed caddies | Acceleron: Hipp shows only a single articulating door and not multiple caddies as claimed | Held: Substantial evidence supports the Board’s finding that Hipp does not anticipate claim 3 (no multiple caddies shown) |
Key Cases Cited
- Dickinson v. Zurko, 527 U.S. 150 (review under APA) (sets standard for appellate review of agency factfinding)
- In re NuVasive, 841 F.3d 966 (Fed. Cir. 2016) (requires opportunity to respond if Board relies on previously unmentioned portion of prior art)
- SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016) (remand to allow briefing and evidence where Board changed claim‑construction theory without notice)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (Board need not take new evidence on remand; Board controls its proceedings under its rules)
- Wagner v. United States, 365 F.3d 1358 (Fed. Cir. 2004) (agencies are bound by their regulations)
- Service v. Dulles, 354 U.S. 363 (agencies must follow their procedures and regulations)
- Crediford v. Shulkin, 877 F.3d 1040 (Fed. Cir. 2017) (agency adherence to procedures is reviewable)