{"id":630,"date":"2016-03-15T08:56:45","date_gmt":"2016-03-15T12:56:45","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=630"},"modified":"2016-03-23T09:21:36","modified_gmt":"2016-03-23T13:21:36","slug":"ptab-cant-rely-on-anticipation-argument-first-made-during-the-oral-hearing","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=630","title":{"rendered":"PTAB Can’t Rely on Anticipation Argument first Made during the Oral Hearing"},"content":{"rendered":"

In Dell Inc, v, Acceleron, LLC<\/em>, [2015-1513, -1514](March 15, 2016) the Federal Circuit affirmed the confirmation of claims, but remanded the cancellation of two claims for reconsideration in view of corrected claim construction. \u00a0At issue was the claim language\u00a0\u201ca microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.\u201d \u00a0The Board concluded, that it is enough that there be an ethernet path that would provide a connection for polling if the microcontroller were configured for, and engaged in, remote polling of the three identified modules. \u00a0The Federal Circuit held that this\u00a0construction\u00a0runs counter to the claimconstruction principle that meaning should be given to all of a claim\u2019s terms, denying\u00a0any substantial meaning to \u201cremotely poll.\u201d<\/p>\n

Also at issue was the anticipation of the claim limitation “caddies” which the Federal Circuit found was first identified in the reference during the oral argument before the Board. \u00a0The Federal Circuit vacated the finding of anticipation because the Board denied\u00a0the patent owner\u00a0notice and a fair opportunity to respond to this basis of cancellation. \u00a0The Federal Circuit explained that a\u00a0patent owner is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection. \u00a0The Federal Circuit said that for a formal adjudication like the inter partes, 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. \u00a7 554(b)(3)), must provide all interested parties opportunity for the submission and consideration of facts and arguments and hearing and decision on notice, (5 U.S.C. \u00a7 554(c)), and must allow a party to submit rebuttal evidence \u00a0as may be required for a full and true disclosure of the facts, (5 U.S.C. \u00a7 556(d)). The Federal Circuit noted that the PTO has advised participants in its Board proceedings that, at oral argument, a party may only present arguments relied upon in the papers previously submitted, and that no new evidence or arguments\u00a0may be presented at the oral argument. \u00a0However, the Federal Circuit found that\u00a0the Board denied the patent owner\u00a0its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after the patent owner could meaningfully respond.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Dell Inc, v, Acceleron, LLC, [2015-1513, -1514](March 15, 2016) the Federal Circuit affirmed the confirmation of claims, but remanded the cancellation of two claims for reconsideration in view of corrected claim construction. \u00a0At issue was the claim language\u00a0\u201ca microcontroller … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[8,21],"tags":[],"class_list":["post-630","post","type-post","status-publish","format-standard","hentry","category-claim-construction","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/630","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=630"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/630\/revisions"}],"predecessor-version":[{"id":631,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/630\/revisions\/631"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=630"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=630"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=630"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}