Dell v. Acceleron – Fed Cir Says PTAB Wrong to Cancel Claim Based on Factual Assertion First Raised at IPR Final Oral Hearing

Now that inter partes review (IPR) has been around for a few years, more and more IPR decisions are making their way to the Court of Appeals for the Federal Circuit (the “Fed Cir”). It’s interesting to see how the Fed Cir is defining the procedural bounds for the USPTO Patent Trial and Appeal Board for these proceedings. 

For example, in Dell, Inc. v. Acceleron, LLC (2015-1513, -1514), the Fed Cir recently vacated the Board’s invalidation of a claim in IPR2013-00440, where the Board relied on facts first asserted at the IPR oral hearing. 

In the opinion, the Fed Cir cites the Administrative Procedure Act (APA), “For a formal adjudication like the inter partes review considered here, the APA imposes particular requirements on the PTO. The agency must ‘timely inform’ the patent owner of ‘the matters of fact and law asserted,’ 5 U.S.C. § 554(b)(3), must provide ‘all interested parties opportunity for the submission and consideration of facts [and] arguments . . . [and] hearing and decision on notice,’ id. § 554(c), and must allow ‘a party . . . to submit rebuttal evidence . . . as may be required for a full and true disclosure of the facts,’ id. § 556(d).” 

The opinion goes on to state, “the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.” 

Hopefully, the Fed Cir will accept more IPR appeals and provide further guidance for both the Board and practitioners.



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