New Arguments Presented for the First Time During PTAB Oral Hearings Are Not Always Waived

| Adam Powell


Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: New arguments may be raised during PTAB oral hearings so long as they clarify an earlier position, are responsive to arguments presented in the opponent’s reply, and do not raise entirely new issues or evidence.

One World petitioned for inter partes review of a patent owned by Chamberlain directed to programmable garage door and gate operator systems. One World argued the limitation “activities to be completed by a user” should be construed to mean “establishing which of the pre-determined activities a user must complete.” Chamberlain argued the term should be construed to require identifying multiple activities. In its reply, One World argued for the first time that the prior art also identifies multiple activities. At the hearing, Chamberlain argued for the first time that the claim requires identifying multiple activities before a transmitting step. The Board held that Chamberlain waived the new argument by raising it for the first time at the oral hearing, and also found the argument unpersuasive on the merits. Chamberlain appealed.

The Federal Circuit held the Board erred in finding waiver because the new argument merely clarified Chamberlain’s earlier position, did not raise new issues or present new evidence, and was responsive to an argument in One World’s reply. Nonetheless, the Federal Circuit affirmed because the new argument was not persuasive and the Board’s decision was supported by substantial evidence.

Editor: Paul Stewart