In a most recent opinion, the Federal Circuit makes it clear that unless it chooses to exercise its waiver rights under 37 CFR 42.5(b), the Patent Trial and Appeal Board ("the Board"), consistent with the PTO guidelines, is obligated to dismiss new arguments and evidence presented for the first time during the oral argument phase of an inter partes review proceeding. Doing so is not an abuse of discretion by the Board. The Federal Circuit also alluded that the Board has discretion on whether to consider such new argument and evidence presented because the Board, according to its governing statutes, regulations and practices has the right to control its own proceedings. If the Board decides to consider such argument and evidence, it should afford the other party the opportunity to provide a rebuttal.
In Dell Inc., v. Acceleron, LLC, (Fed. Cir. 03/19/2018) the new argument presented for the first time during oral argument was identifying another member of the prior art as meeting a limitation of a claim 3 at issue. Previously, a different member of the prior art was identified as meeting such element, but was deemed to be insufficient. The Board initially considered the new argument without providing the other party the opportunity to rebut and invalidated claim 3. The case was appealed and remanded back to the Board. On remand, the Board decided not to consider the new argument and thus, reversed the invalidity findings and the case then went to the Federal Circuit on appeal. There, the petitioner argued that "ignoring the new evidence of unpatentability is against public policy because it will not improve patent quality." The Federal Circuit disagreed, holding that "under these circumstances, due process, and preserving the Board's discretion outweigh any negative effects of not invalidating a patent claim,..." They added that the "decision does not preclude another party from challenging the validity of claim 3 on the same basis."
This may be a harsh result for petitioners who may now be estopped from bringing before a court even the simple argument that a specific element of the prior art reads on a claim limitation. This result may be especially tough for the petitioner in Dell who knows, based upon the Board's previous decision, that such an argument should invalidate the claim.
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