In Dell Inc. v. Acceleron, LLC, Appeal Nos. 2015-1513, -1514, the Federal Circuit vacated the PTAB’s cancellation of two claims of Acceleron’s patent. One claim was remanded for reconsideration based on an incorrect claim construction. A second claim was remanded because the Board failed to allow Acceleron a fair opportunity to respond to new arguments raised by Dell during oral argument.

Claim 20 required a microcontroller module that remotely polls a CPU module. Acceleron argued before the Board that it should construe this claim term to require that the microcontroller module actually be configured to remotely poll.  The PTAB disagreed and construed the claims to not require the module to be configured to remotely poll. On appeal, the Federal Circuit held that the PTAB’s construction ran counter to the claim-construction principle that every claim term should be given meaning. Because the PTAB did not correctly construe the claim to require remote polling, the Federal Circuit vacated the PTAB’s cancellation of claim 20 and remanded for reconsideration under the correct construction.

Regarding claim 3, the Federal Circuit held that the PTAB erroneously relied on an argument presented by Dell for the first time during oral argument.  Acceleron, therefore, did not have notice and a fair opportunity to respond to Dell’s new argument.  The Federal Circuit vacated the PTAB’s cancellation of claim 3 and remanded for further proceedings.