The PTAB’s August 22, 2016, decision in IPR2013-00440 on remand from the Federal Circuit, Dell, Inc. v. Acceleron, LLC,¹ sheds light on how the PTAB may treat seemingly new or different arguments raised post-petition.  After Dell, and as discussed below, practitioners may expect the PTAB to exercise a greater degree of scrutiny when considering arguments that differ from those raised in the original petition, or that are otherwise not responsive to a patent owner’s positions raised in a response.  See 37 C.F.R. § 42.23(b).  For petitioners, the decision should serve as a reminder that petitioners should satisfy their burden of proof based on arguments made in the petition, including originating alternative theories of invalidity where identified.  For patent owners, the decision suggests that the PTAB may be more receptive to entertaining motions or arguments from patent owners seeking to respond to allegedly new or different arguments raised post-petition.

Background
Key to the issue in IPR2013-00440 was the Petitioner’s (Dell’s) post-petition arguments regarding the “caddies” recited in claim 3 of Acceleron’s U.S. Patent No. 6,948,021 (the “’021” Patent).  As shown in Figure 1, the ’021 Patent discloses a computer networking appliance 100 with a physical chassis 150 that contains a series of caddies 152 to hold hot-swappable modules.

The ‘021 Patent generally relates to a computer networking appliance that allows a user to swap the modules in the caddies without having to power down the network appliance.  The modules can include CPU modules 102(a)-(e), a power module 106, and an Ethernet switch module 110.

In its petition, the Petitioner argued that U.S. Patent No. 6,757,748 (“Hipp”) anticipates claims 3 and 20 of the ’021 Patent.  In particular, the Petitioner argued that Hipp’s articulating door 262 (shown in Fig. 12 of Hipp) is the same as the caddies recited in claim 3.

Following patent owner’s Response (Paper 23), the petitioner’s Reply (Paper 28) raised—for the first time—a second argument: that the claim 3 caddies are the same as Hipp’s power-supply mounting mechanisms 278.  In response, the patent owner requested the PTAB’s permission to file a motion to strike the new argument or, in the alternative, permission to file a sur-reply to respond to the merits of that argument.  But those requests were subsequently denied by the PTAB.  Later, at oral argument, the petitioner raised—again, for the first time—a third argument, to which patent owner objected, that Hipp’s Figure 12 “slides” located below the power supplies 280 also constituted the claim 3 caddies.

In its final written decision, the PTAB cancelled claims 3 and 20 as anticipated by Hipp.  For claim 3, the PTAB relied on the petitioner’s new third argument.

On appeal, and as described in our previous posting, the court vacated and remanded the PTAB’s cancellations of these claims. With respect to claim 20, the court concluded that the PTAB had applied an unreasonable claim construction. With respect to claim 3, the court concluded the PTAB had improperly relied on the petitioner’s new (third) argument raised for the first time at oral argument, which deprived the patent owner an opportunity to meaningfully respond.

Decision on Remand
On remand, after permitting additional briefing from the parties, and with guidance from the Federal Circuit’s decision, the PTAB accorded no weight to the petitioner’s third argument made at oral argument and scrutinized the petitioner’s remaining arguments made post-petition.  The PTAB refused to consider the petitioner’s second argument (first presented in its Reply) after determining that this argument was new and did not reply to the patent owner’s response.  Specifically, the PTAB agreed with the patent owner that the second argument regarding the new identification of the claimed “caddies” was non-responsive and, therefore, new because it introduced a new theory of invalidity in the Reply instead of responding with respect to the originally identified theory in the petition.

In its remand brief, the petitioner attempted to argue that its second argument was justified because the patent owner first proposed a construction for the term “caddy” in its Response.  The PTAB found this unpersuasive, however, because the proposed construction was unrelated to the term-at-issue, i.e., “carrier.”  Because the petitioner offered no other explanation, the PTAB limited its review of claim 3 to the petitioner’s original argument in the petition, and concluded that petitioner had failed to establish that claim 3 was unpatentable.

With respect to claim 20, the PTAB similarly limited its analysis to the petitioner’s explanation of Hipp in the petition.  This proved fatal to the petitioner’s argument on remand, where the petitioner had argued a construction from its Reply that differed from its construction in its petition: “For the first time, in its Reply, and again in its Remand Briefing, Petitioner applies a construction of ‘polling’ different than that proposed in the Petition.”  The PTAB noted that the petitioner offered no explanation for its changed construction.  Accordingly, the PTAB applied the petitioner’s original construction from the petition and concluded that the petitioner had failed to establish that claim 20 was unpatentable.

 

¹ 818 F.3d 1293 (Fed. Cir. 2016), available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=FCA&flNm=15-1513_1