The Federal Circuit in Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024) (Lourie, Chen, and Cunningham), affirmed the PTAB's determination that claims of Voice Tech Corp.'s ("Voice Tech") U.S. Patent No. 10,491,679 ("the '679 patent"), which covers technology for controlling a computer via a mobile device using voice commands, were obvious. A key holding of the case is that a party's choice to not re-raise an argument in its request for rehearing to the Board does not, in and of itself, forfeit the argument for review by the Federal Circuit. Slip op. at 9.
Unified Patents, LLC ("Unified") filed a petition for inter partes review ("IPR"), challenging certain claims of the '679 patent. Id. at 4. The Board instituted review and issued a Final Written Decision finding all challenged claims unpatentable over a combination of prior art references. Id. at 4-5. Voice Tech requested rehearing, arguing the Board misapprehended or overlooked arguments regarding real party in interest disclosure requirements and certain obviousness case law. Voice Tech's request for rehearing was denied.
On appeal, Voice Tech disputed the Board's claim construction rulings. In response, Unified pointed to 37 C.F.R. § 42.71(d), which states that "[a] party dissatisfied with a [Board] decision may file a single request for rehearing" and the "request must specifically identify all matters the party believes the Board misapprehended or overlooked." Slip op. at 9. Under Unified's reading of the regulation, Voice Tech had forfeited its claim construction arguments on appeal because its request for rehearing did not repeat the claim construction arguments raised in its petition. Id. at 8. The Federal Circuit rejected Unified's interpretation of the regulation, noting that "nothing in the statutes or regulations requires a party to file a request for rehearing to preserve a right to appeal"—rehearing requests are optional. Id. at 9. If a party chooses to file a request for rehearing, it need only "identify the issues it wishes to present for rehearing"; nothing in the regulation requires a request "to regurgitate all arguments the Board already considered and rejected, simply to preserve them for appeal." Id. The arguments on appeal were presented to and fully considered by the Board in the underlying proceedings, which is all that is required. Id. at 10.
The Opinion also distinguished Polycom, Inc. v. Fullview, Inc., 767 F. App'x 970 (Fed. Cir. 2019), which Unified attempted to rely on in support of its forfeiture argument. As an initial matter, the Court noted that the Polycom decision is non-precedential and thus not binding. Slip op. at 10. In any event, the convoluted procedural posture of Polycom, which involved an appeal of an inter partes reexamination, renders it distinguishable from the case at hand. Id. at 10-11. Ultimately, the PTAB in Polycom never ruled on the issue that the requester sought to raise at the Federal Circuit, and the case is thus not analogous to the Voice Tech appeal. Id. at 11.
Takeaway: A PTAB request for rehearing need not incorporate every argument a party might eventually seek to appeal to the Federal Circuit, so long as the argument was presented to and fully considered by the Board in the underlying proceedings.
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