In Dell Inc. v. Acceleron, LLC, the Federal Circuit held that a panel of the Patent Trial and Appeal Board (PTAB) correctly declined to consider the petitioner’s new argument on remand, even though the panel previously found a challenged claim unpatentable on the basis of that argument. In doing so, the Federal Circuit emphasized that concerns over due process in inter partes review (IPR) trials outweigh public policy concerns over the validity of an issued patent claim.

Background

As discussed in my previous article, in an earlier appeal of the same IPR proceeding, the Federal Circuit vacated part of the PTAB’s final written decision because the PTAB relied on a new argument and evidence that the petitioner (Dell) presented for the first time at the oral hearing. The Federal Circuit held that the patent owner (Acceleron) was denied its procedural rights under the Administrative Procedure Act (APA) because it did not have notice of the new argument and could not meaningfully respond to the new argument at the oral hearing.

On remand, the PTAB panel declined to consider the new argument presented at the oral hearing because it was not presented in the IPR petition, and it was not responsive to an argument made by the patent owner. In its decision on remand, the PTAB panel held that the petitioner did not establish that the challenged claim was unpatentable based on the arguments presented in the petition. The petitioner appealed the PTAB’s decision not to consider its new argument and evidence on remand.