Dell’s Arguments Too Late to Cancel Acceleron’s Claim

by Dennis Crouch

Dell Inc. v. Acceleron, LLC (Fed. Cir. 2018)

In its original decision, the PTAB cancelled claim 3 of Acceleron’s U.S. Patent No. 6,948,021 (inter alia). That holding was based upon an argument first presented by Dell at Oral Arguments (over Acceleron’s procedural objections).  The Federal Circuit in 2016 vacated that first PTAB decision — “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.”  The Federal Circuit explained:

The agency must timely inform the patent owner of the matters of fact and law asserted . . . , must provide all interested parties opportunity for the submission and consideration of facts and arguments . . . and hearing and decision on notice, . . . and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure
of the facts.

On remand, the Board rewrote its decision – this time excluding and ignoring Dell’s late argument and thus finding the claim valid.

On appeal again, the Federal Circuit has now affirmed the validity finding — holding that the Board properly ignored Dell’s argument – even though the result is that we confirm the validity of a patent claim that is thought to be invalid.  The problem for Dell is that the procedural rules are clear – “No new evidence or arguments may be presented at the Oral Arguments.” (Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)).

The primary holding here is that the PTAB was not required to allow for any re-briefing of the arguments and evidence.  In its decision, however,, the Federal Circuit goes further and states that the Board could not reopen arguments even if had wanted to:

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 (Fed. Cir. 2004) (“[A]n agency is bound by its regulations.”); 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.

This final quoted paragraph is potentially dicta, but will certainly carry the day within the Board.

 

49 thoughts on “Dell’s Arguments Too Late to Cancel Acceleron’s Claim

  1. 6

    “[A]n agency is bound by its regulations.”

    You wouldn’t know that from the way the PTO behaves.

    1. 6.1

    2. 6.2

      I am reminded of a similar Pyrrhic victory analogy to which the Office ignores its own restraints and the applicant must expend additional energies (and monies): reversal (and not remand) at applicant appeal victories.

      Plenty is anecdotes out there (and I personally handled such a case) in which a success at the appeal level (and not remand) is met with a reopening and new search which at that late time finds new art (the date of the art search predates a later inserted “approval” to engage in that search).

      Now, while the logic of this court case might indicate that such a late move should preclude the Office from using any fruit of the poisoned tree, the pyrrhic nature dictates that the applicant is basically trapped in the renewed examination cycle.

      The lack of any meaningful penalty all but guarantees that the improper behavior of the Office will not cease.

  2. 5

    So, all Dell has to do is find a corporate beard to file another IPR. They should ask Apple as they have plenty of them in their back pockets.

  3. 4

    Seems legit to me. There is a game, there are rules to the game, you break the rules, you lose the game. The public policy argument is answered by “our decision does not preclude another party from challenging the validity of claim 3 on the same basis” which essentially means this patent is only enforceable against Dell- and maybe not even, because breaking a PTAB rule probably does not result in issue preclusion in district court, does it?

    Meanwhile, if every industrial mistake that led to a human death meant automatic or presumptive corporate death, there would be no automotive industry, no aviation industry, no medical industry, etc. What MM has against autonomous vehicles I don’t know, but they are happening, and they will be net safer than human operated vehicles sooner or later.

    1. 4.1

      Prepare for some swagger, Marty.

    2. 4.2

      if every industrial mistake that led to a human death meant automatic or presumptive corporate death, there would be no automotive industry, no aviation industry, no medical industry, etc.

      Nice strawman.

      What MM has against autonomous vehicles I don’t know

      They don’t work as advertised and they aren’t going to work as advertised, ever, in our lifetimes, unless the corporations outlaw pedestrians, bikers and human-operated vehicles. Does that help, Marty? Try not to swallow too much of the kool-aid that Uber and Waymo are forcing down your throat. Next thing you know you are going to be forced to pay for their “tech”.

      they are happening

      LOL

      they will be net safer than human operated vehicles

      “Safety” isn’t the issue. There are zillion far cheaper ways to make driving “safer” right now. And keeping a robot from crashing into something isn’t exactly “new technology”, in case you’ve been asleep for the last fifty years.

      Try thinking deeper about what’s going on.

      1. 4.2.1

        as advertised, by whom exactly?

        What physical laws prevent adequate sensing and response to pedestrians, bikers and human-operated vehicles?

        Time was, if a rocket booster flew backwards 6 inches, the jig was up. Now they fly backwards supersonic and land themselves nicely.

        Time was, the idea of speaking to your handheld computer and being fully understood was science fiction.

        Everyday cars now don’t skid, stay more stable on their own than the world’s best race drivers used to be able to accomplish, park themselves, avoid lane changes, wake sleeping drivers etc. etc. How much of a stretch is it, really, that on some roads and conditions they will be autonomous? Not much, and that ain’t Kool Aid, its simple extrapolation.

        1. 4.2.1.1

          on some roads and conditions

          ROTFLMAO

          Try to keep the goalpost in place, Marty. I built a driverless motorized car that could operate “on some roads and conditions” when I was twelve. Before the World Wide Web! Can you imagine? It was like a miracle.

          as advertised, by whom exactly?

          Another piece of advice: if you are just getting up to speed on an issue, do some research first before asking very silly questions.

          Like I said upthread: try paying a bit closer attention to the assertions being made and you’ll see an example of massive corporate fraud and grift unfolding right before your eyes. Maybe the biggest ever? But for goodness sake don’t just sit there and be a stooge for these companies, which are some of the worst companies ever even if we discount their “self-driving” “automous” vehicle silliness.

          1. 4.2.1.1.1

            “I built a driverless motorized car that could operate “on some roads and conditions” when I was twelve. Before the World Wide Web! Can you imagine? It was like a miracle.”

            This explains a lot. I now have the vision of a grumpy old man typing away on his computer that magically let’s him whine on patent blogs in between yelling at the kids to get off his lawn.

            Then again, I highly doubt the above claim.

            1. 4.2.1.1.1.1

              I highly doubt the above claim.

              I was in the Boy Scouts. Maybe you were selling cookies?

              Seriously, man: English is an important skill for a lawyer. If you can’t read what someone wrote and read it and understand it for exactly what it says, you have no business being near a patent. Go back to Big Jeans place and stink it up.

              1. 4.2.1.1.1.1.1

                Your 0bsess10n is showing again (along with your Accuse Others meme).

          2. 4.2.1.1.2

            Who said the goalpost was that “autonomous vehicles” means autonomous on every strip of level ground in the world? Is that your own mental goalpost?

            Aircraft autopilots started by holding wings level, and then evolved over time to complete flight directors. The goalpost moved, and nobody stopped working on autopilots.

            if you are just getting up to speed on an issue, do some research first before asking very silly questions

            Hey Mr. Up to Speed- every carmaker and major tech company in the world has some autonomous vehicle research / development underway. I’m aware of Uber/Waymo- who are probably bit players in the end compared to GM, Ford, VW, Daimler, Toyota, etc.

            The low corporate character of Uber is a sideshow to the inevitable development of autonomous vehicles. You know a lot about patents, but you read like a morhoon on this subject. Sure there is some grift, as there always is, but it’s massively overweighted by the real R&D pouring into the space.

            Here is a reliable resource to educate yourself, if you care to.

            link to consumerreports.org

            1. 4.2.1.1.2.1

              Who said the goalpost was that “autonomous vehicles” means autonomous on every strip of level ground in the world? M

              And you’re still doing it.

              My goodness, Marty, stop digging.

              I’ve been watching this game being played for years now. These words “autonomous car” and “self-driving car” — that have been used endlessly by these hustlers and con artists at Uber and Google — mean something to most people and it’s not “a car that can drive down a runway by itself and not suddenly veer off for no reason.” The propaganda is meant to mean you can sit in the seat and text your friend while the robot drives you to the steering wheel museum without getting into an accident or causing another driver or pedestrian to spray paint “A H Ol E” on your windowshield.

              the real R&D pouring into the space

              LOL You can pour all the “R&D” you want into it and you’re still not going to come close to what has been advertised *unless* you criminalize a lot of what qualifies as ordinary driving behavior now. And by close I mean capable of dealing with 99.9% of the normal stuff that turns up when you’re doing an everyday task like, e.g., driving around looking for a place to drop off a kid at school in a metro area in the pouring rain, not 95% capable of driving ten blocks in Tempe.

              1. 4.2.1.1.2.1.1

                LOL. You keep on fighting the good fight there Minnie. You just make yourself lose more and more credibility. If I am to understand you correctly you would rather take 1 pedestrian killed every 1.6 hours by human drivers as compared to 1 killed ever after how many millions of miles logged by self-driving vehicles?

                “In 2015 there were 5,376 pedestrians killed (Table 1) and an estimated 70,000 injured (Table 2) in
                traffic crashes in the United States. A total of 5,295 traffic crashes (Table 4) had one or more pedestrian
                fatalities. On average, a pedestrian was killed every 1.6 hours and injured every 7.5 minutes in traffic
                crashes.” link to crashstats.nhtsa.dot.gov

        2. 4.2.1.2

          What physical laws

          Golly gee, Marty, perhaps the biggest issues with robot cars don’t concern conformity with the physical laws of nature but abiding by the man-made laws while not ruining everyone else’s experience.

          The big obstacle is not “safety”. I can make an incredibly safe robot car right now. It’ll never crash into anything. But shortly after I put it into the streets of San Francisco at rush hour some reasonable person is going to take a baseball bat and smash it to pieces.

          Oh but wait! We’ll just change all those man-made laws to make things easier for robot cars because CEOs need to get really really rich and we wouldn’t want to stand in the way of that. And at the same time we’ll pass a bunch of laws that require pedestrians and human drivers to alter their behavior to satisfy the “needs” of the robot cars. What could possibly go wrong? Surely this is a glibertarian fantasy, right? Soon to be followed by the robot cop, which nobody has ever contemplated before, right?

          1. 4.2.1.2.1

            “I can make an incredibly safe robot car right now. It’ll never crash into anything.”

            Go for it. It would be much more productive than what you usually do all day. I would really like to see you be able to pull this off. After all, it’s just simple sensors. Go ahead and do it. We’re all waiting.

        3. 4.2.1.3

          Also forgot to mention the obligatory patent connection: the only way to make this technology work next year is to grant as many patents as possible on methods of using logic to drive a car, based on data collected by … sensors! Mmmmm … sensors. S00per techno!

      2. 4.2.2

        “Safety” isn’t the issue.

        But it IS the emotional card that you played.

        That is, until the facade of that card is exposed. Your rather bland (and predictable) response of “Try thinking deeper” does not change the fact that the card YOU chose to play has been shown to be a facade.

        Maybe instead of telling others the things that you need to attend to yourself, you might attend to shorter versions:

        Try thinking deeper

        becomes

        Try thinking

        or merely,

        Try

        1. 4.2.2.1

          Based on preliminary information, the car was going approximately 40 mph in a 35 mph zone, according to Tempe Police Detective Lily Duran.

          Now let’s hear Billy speechify about the “rule of law.”

          1. 4.2.2.1.1

            I would rather have you be consistent in your rants (and reasons for those rants) and that consistency tied to the rule of law.

            That seems to be beyond your control.

    3. 4.3

      every industrial mistake

      That’s what you are calling a speeding “self-driving car” that runs over a pedestrian without slowing down?

      I’m sure the victim’s family will appreciate that.

  4. 3

    Meanwhile:

    A self-driving Uber SUV struck and killed a pedestrian in Tempe, Arizona, Sunday night, according to the Tempe police. The department is investigating the crash.

    A driver was behind the wheel at the time, the police said.

    “The vehicle involved is one of Uber’s self-driving vehicles,” the Tempe police said in a statement. “It was in autonomous mode at the time of the collision, with a vehicle operator behind the wheel.”

    But Tempe is a very complicated city to drive in!

    Three words: corporate death penalty.

    1. 3.1

      How active are you against current car companies given the level of vehicular deaths? – and those not by your hobby horse of automated vehicles?

      1. 3.1.1

        MM has irritated so many people here to no end that I cannot imagine he would post anything here related to his job, lest he be tracked down.

        1. 3.1.1.1

          ” lest he be tracked down”

          I already tracked him down, inadvertently actually. Nobody cared enough to pay a handsome bounty (and MM didn’t bid agin them).

          1. 3.1.1.1.1

            Nobody cared enough

            Why should anyone care who Malcolm “really is?”

      2. 3.1.2

        How active are you against current car companies given the level of vehicular deaths?

        Not very. How active are you against men beating their wives?

        1. 3.1.2.1

          Odd that you think that the question is a “when did you stop beating your wife” type of question.

          It’s not.

          It’s a “are you consistent in your convictions or are you just on a typical rant” type of question.

          Your answer was not unexpected.

    2. 3.2

      … and when the patents issue you will say: people have been driving for a hundred years, … abstract idea because it is old and “do it on a computer” is obvious because computers do calculations, computers are old, cameras are old, radar is old, lasers are old, gps is old… where is the new structure…

      …. suuuuuper serious person.

      1. 3.2.1

        …not to mention the “predictable arts” argument…

      2. 3.2.2

        when the patents issue you will say: people have been driving for a hundred years, … abstract idea because it is old and “do it on a computer” is obvious because computers do calculations, computers are old, cameras are old, radar is old, lasers are old, gps is old… where is the new structure…

        And I’ll win.

        [shrugs]

        1. 3.2.2.1

          In the best Malcolm tones:

          … and protons are old, and neutrons are old, and electrons are old…

          [ ]

        2. 3.2.2.2

          Only in Trump land, where you can say that something is impossible and will never work and then, when it does, say it was obvious how to do it from the dawn of time.

          1. 3.2.2.2.1

            you can say that something is impossible and will never work

            Nobody is saying this so it’s not clear what you are responding to.

            The issue is the positive claims that are being made by “tech” companies who are overselling what they can and will do, and who are simultaneously demanding that the public pay for it.

            And people who should (in theory) know better are carrying water for them. Including glibertarians? Of course including glibertarians because the world has never known a bigger pack of shallow minded hypocrites.

            1. 3.2.2.2.1.1

              “you can say that something is impossible and will never work

              Nobody is saying this so it’s not clear what you are responding to.”

              Nobody is saying this? Really? The quote below is not fairly summarized as you saying practical “self driving” cars are impossible?

              “LOL You can pour all the “R&D” you want into it and you’re still not going to come close to what has been advertised *unless* you criminalize a lot of what qualifies as ordinary driving behavior now. And by close I mean capable of dealing with 99.9% of the normal stuff that turns up when you’re doing an everyday task like, e.g., driving around looking for a place to drop off a kid at school in a metro area in the pouring rain, not 95% capable of driving ten blocks in Tempe.”

    3. 3.3

      It’s newsworthy because it’s uncommon. Also, the pedestrian was j-walking, and may be at fault. Your continued strange obsession over self-driving vehicles only confirms your lack of understanding of technology.

      1. 3.3.1

        the pedestrian was j-walking,

        News flash: you don’t get to run over people and kill them because they are “j walking”.

        It’s newsworthy because it’s uncommon.

        It’s newsworthy because “k ill ed”. When left to their own “devices”, these robot cars crash into stuff all the time when their on city roads, or they get in the way of other cars because the robot driver is “confused” by stuff that human beings aren’t confused by.

        This doesn’t end up in the news that you read because the news that you read is basically press releases typed up by the companies that are trying to sell you on this “neato” technology that is “going to be everywhere in the next year or two” (or so they’ve been saying for the last ten years).

        1. 3.3.1.1

          Are you under the impression that human drivers don’t hit and kill j-walking pedestrians?

          Was this the only vehicle/j-walking pedestrian interaction in the whole country Sunday night?

          Accidents happen. Especially when someone is breaking the rules meant to prevent them (like J-walking) after dark.

        2. 3.3.1.2

          …what happened to the “predictable arts” argument?

          [ ]

        3. 3.3.1.3

          “News flash: you don’t get to run over people and kill them because they are “j walking”.”

          I almost hit a j walker last week.

        4. 3.3.1.4

          you don’t get to

          Talk about a strawman…

          I am more than sure that no one let alone any of the autonomous advocates ever said that such vehicles “get to” run over anything.

          It’s newsworthy because “k ill ed”.

          And there you are – attempting to move the goalposts with the emotive ploy that YOU yourself really do not feel or believe in (““Safety” isn’t the issue.“)

          because the news that you read is basically press releases typed up by the companies that are trying to sell you

          Here we may find some common ground. Propaganda is all over the place. But you are part of that propaganda effort. Even as you – as ever – try to not have “rules” apply to your own rants.

          1. 3.3.1.4.1

            no one let alone any of the autonomous advocates ever said that such vehicles “get to” run over anything.

            Well what happens when one of them does k i ll a bunch of people, “anon”? Like runs over a bunch of schoolkids, including your own kid.

            What happens? Do we put the car in jail?

            1. 3.3.1.4.1.1

              Are you saying that there are NO repercussions?

    4. 3.4

      Tempe is incredibly dangerous for anyone walking across the street, regardless of where they walk. Speeds are high, streets are wide, it’s a college town, etc.

  5. 2

    A proper and unsurprising decision with two good lessons. The petitioner Dell is now be stuck with it even if, as always, other accused infringers are not. As the Court in this second appeal notes: “At oral argument before the Board, Dell for the first time argued that [the Hipp patent] “slides,” on which power supplies 280 rest, meet the “caddies” requirement of claim 3.” Acelleron had then made a prompt objection to that raising of a new [and material] factual argument being made for the first time in a final hearing.

    1. 2.1

      P.S. the latest “Post Grant” blog has interesting statistics on what happens to the relatively small % of IPR PTAB decisions that are not sustained by the Fed. Cir. on appeal. Most are remands, like this, rather than reversals, due to fact issues. The remands result in roughly 1/3 each of settlements, PTAB reversed decisions [as here] and PTAB reconfirmed decisions.

  6. 1

    Given the last sentence, a pyrrhic victory (at best)…

    1. 1.1

      Translation of that last sentence: We keep telling you lugs at PTAB to at least appear like a court, because we are bending over backwards already to preserve your Constitutionality, and what difference does it make anyways? There are no claims that can’t be invalidated at anytime for any reason by PTAB.

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