Dell loses appeal in Acceleron case

There was a procedural issue:



Dell Inc. appeals from a remand determination of the
Patent Trial and Appeal Board. In the underlying inter
partes review proceeding, the Board relied on new argument
and evidence presented by Dell for the first time at
oral argument, without providing Acceleron, LLC, an
opportunity to respond. Both Dell and Acceleron appealed,
and this court remanded, among other reasons, on
grounds that the Board erred when it failed to give Acceleron
an opportunity to respond. On remand, the Board
declined to consider both Dell’s new argument and Acceleron’s
proposed response. Dell appeals and argues that
the Board was required under our remand order and this
court’s precedent to consider both Dell’s new argument
and Acceleron’s response. We affirm.



The CAFC observed:


We disagree that NuVasive and SAS compelled the
Board to consider the new evidence in this instance. We
note the PTO guidelines provide that “[n]o new evidence
or arguments may be presented at the oral argument.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012). Further, in Dell I we relied upon
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359
(Fed. Cir. 2015), which explicitly held:
We do not direct the Board to take new evidence,
or, even, to accept new briefing. The Board may
control its own proceedings, consistent with its
governing statues, regulations, and practice. 37
C.F.R. § 42.5(a). Those statutes, regulations, and
practices embody expedition-and efficiency-based
policies that the Board must consider in determining
the scope of the remand proceedings.
Id. at 1367. The Board was obligated to dismiss Dell’s
untimely argument given that the untimely argument in
this case was raised for the first time during oral argument.
See, e.g., Wagner v. United States, 365 F.3d 1358,
1361 (Fed. Cir. 2004) (citing Service v. Dulles, 354 U.S.
363, 388 (1957)) (“[A]n agency is bound by its regulations.”);
Crediford v. Shulkin, 877 F.3d 1040, 1047 (Fed.
Cir. 2017) (same).
Dell contends that ignoring evidence of unpatentability
is against public policy because it will not improve
patent quality. We find that under these circumstances,
due process and preserving the Board’s discretion outweigh
any negative effects of not invalidating a patent
claim, especially since our decision does not preclude
another party from challenging the validity of claim 3 on
the same basis.