Denying effect to functional language in a patent claim is unreasonable

Andrew Melick | March 23, 2016

Dell Inc. v. Acceleron, LLC

March 15, 2016

Before Moore, Taranto and Hughes. Opinion by Taranto


Dell filed a petition for an inter partes review (“IPR”) of U.S. Patent No. 6,948,021 (the ‘021 patent) owned by Acceleron. The Patent Trial and Appeal Board (“PTAB”) confirmed the validity of claims 14-17 and 34-36 and cancelled claims 3 and 20 as being anticipated by U.S. Patent No. 6,757,748 to Hipp. Agreeing with the PTAB’s decision that the Hipp reference does not disclose as programmed being capable of performing functions recited in claim 14, the CAFC affirmed the PTAB’s confirmation of claims 14-17 and 34-36. Regarding claims 3 and 20, the CAFC vacated the PTAB’s decision to cancel and remanded. CAFC stated that the PTAB unreasonably denied effect to the functional language “to remotely poll” recited in claim 20. For claim 3, the CAFC stated that Acceleron was denied “notice and a fair opportunity to respond” to Dell’s new argument raised at the oral argument and relied on by the PTAB in its decision.


U.S. Patent No. 6,948,021 (the ‘021 patent) owned by Acceleron is to a computer-network appliance containing “hot-swappable” components that can be removed and replaced without turning off or resetting the computer system as a whole. Fig. 1 of the ‘021 patent is shown below.








FIG. 1 (’021 PATENT)

In the IPR requested by Dell, the PTAB confirmed the validity of claims 14-17 and 34-36 and cancelled claims 3 and 20 as being anticipated by U.S. Patent No. 6,757,748 to Hipp. Fig. 12 of Hipp is provided below.








Dell appealed the validity decision of claims 14-17 and 34-36, and Acceleron appealed the decision cancelling claims 3 and 20. The PTAB grouped claims 14-17 and 34-36 together with claim 14 being representative of the group. Thus, claims 3, 14 and 20 are at issue.

Claim 20 is provided below.

20. A computer network appliance comprising:

a hot-swappable CPU module;

a hot-swappable power module;

a hot-swappable ethernet switch module; and

a backplane board having a plurality of hot swap mating connectors; and

a 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;

wherein each of the CPU module, the power module and the ethernet switch module includes a hot swap connector for connecting with a specific hot swap mating connector of the backplane board.

Claim 3 depends from claim 1 via claim 2 (reciting a chassis). Claim 1 is similar to claim 20 except it does not require a microcontroller module. Claim 3 recites:

3.  The computer network appliance of claim 2, wherein the chassis comprises caddies providing air flow from the front to the rear of the chassis.

Claim 14 depends from claim 1 and recites:

14.  The computer network appliance of claim 1, wherein a CPU module comprises hardware BIOS for configuring the CPU module and instructing a network attached storage (NAS) to locate an operating system (OS) from which to boot.

The CAFC’s decision started with discussion of the PTAB’s determination of validity of claim 14. Dell cited the Hipp reference as anticipating claim 14. Dell argued that Hipp discloses (a) a CPU module that includes a BIOS that can run on different operating systems and can boot from a local area network, and (b) a server that provides network attached storage (NAS) among the devices on the network. Acceleron’s expert stated that even if Hipp teaches a CPU that can boot from software located somewhere on the network, Hipp does not teach or suggest booting the CPU module from the NAS or to instruct the NAS to locate an operating system from which to boot. The PTAB agreed with Acceleron that Hipp does not explicitly or implicitly describe a CPU module as programmed to be capable of remotely booting from the NAS. The CAFC agreed with the PTAB and further stated for anticipation it is immaterial whether a user of the Hipp system could modify the system to activate such remote booting. Thus, the CAFC affirmed the PTAB’s decision confirming the validity of claims 14-17 and 34-46.

Regarding claim 20, the key issue is with the phrase “to remotely poll” in the microcontroller module limitation. The PTAB construed the microcontroller module limitation as being satisfied if there is 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. The CAFC stated that “[t]he Board’s construction runs counter to the claim-construction principle that meaning should be given to all of a claim’s terms”; and that “the Board’s reading of claim 20 denies any substantial meaning to ‘remotely poll.’” The CAFC further pointed out that the PTAB’s construction treats the claim as if it merely recited that the ethernet path provided a connection to the modules.

To support giving weight to the “remotely poll” phrase the CAFC pointed out that claim 22 recites that “the microcontroller module polls the CPU module on the status of an OS.” Since the microcontroller module in claim 22 actually polls the CPU module, this suggests that the microcontroller of claim 20 also polls and is configured for polling the modules. The CAFC also cited the description in the specification which discusses a dedicated ethernet path to remotely poll the health of the power module, the ethernet switch module and the CPU modules, and stated that this description “supports reading the claim language to require that the controller be configured for such remote polling.”

The CAFC concluded that the PTAB’s construction of claim 20 is unreasonable, and specifically, that “[i]t is unreasonable to deny effect to the ‘remotely poll’ language, which indicates that the microcontroller module is actually configured to communicate in that way.” The CAFC vacated the PTAB’s decision to invalidate claim 20 and remanded for consideration under the correct claim construction.

Regarding claim 3, Dell initially cited articulating door 262 of Hipp for corresponding to the “caddies” of claim 3 in the IPR petition. In Dell’s reply to Acceleron’s patent owner response, Dell argued that the “caddies” of claim 3 are also found in Hipp’s power-supply mounting mechanisms 278. Acceleron requested to either strike Dell’s new argument or to file a sur-reply. The PTAB denied Acceleron’s request. During oral arguments, Dell added for the first time that Fig. 12 of Hipp also shows unlabeled “slides” located below the power supplies 280 that correspond with “caddies” of claim 3. Acceleron objected on the ground that Dell argued based on the “slides” of Fig. 12 for the first time in the oral argument.

Relying exclusively on the “slides” of Fig. 12 of Hipp for the “caddies” element of claim 3, the PTAB found claim 3 to be anticipated by Hipp. The CAFC stated that PTAB denied Acceleron “notice and a fair opportunity to respond” to Dell’s assertion regarding the “slides” of Fig. 12 of Hipp and stated that “A patent owner in Acceleron’s position is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection.” The CAFC cited the Administrative Procedure Act (“APA”) for requiring that the USPTO must “timely inform” the patent owner of “the matters of fact and law asserted”; and “must allow ‘a party to submit rebuttal evidence as may be required for a full and true disclosure of the facts.’” The CAFC concluded that Acceleron did not have the required opportunity to present evidence on whether the Hipp “slides” meet the claim 3 requirements, and thus, vacated the PTAB’s decision to cancel claim 3 and remanded for further proceedings on anticipation of claim 3.


In this case, the CAFC shows a willingness to give weight to functional language and interpret as “configured to” limitations. Functional language can be given more weight based on description in the specification and dependent claims.

Also as a patent owner in an IPR, this case provides ammunition against arguments that a petitioner may try to raise after the petition has been filed. A patent owner should object when the petitioner improperly asserts new arguments, and either move to strike the new arguments or request an opportunity to respond.

Full Opinion


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