  United States Court of Appeals
      for the Federal Circuit
                ______________________

                     DELL INC.,
                      Appellant

                          v.

                 ACCELERON, LLC,
                       Appellee
                ______________________

                      2017-1101
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00440.
                 ______________________

               Decided: March 19, 2018
               ______________________

    KEVIN J. MEEK, Baker Botts, LLP, Austin, TX, argued
for appellant. Also represented by PAULA D. HEYMAN,
JENNIFER LIBRACH NALL.

    NORMAN ANDREW CRAIN, Thomas|Horstemeyer LLP,
Atlanta, GA, argued for appellee. Also represented by
ROBERT GRAVOIS.
                ______________________

  Before MOORE, REYNA, and TARANTO, Circuit Judges.
2                                  DELL INC.   v. ACCELERON, LLC



REYNA, Circuit Judge.
    Dell Inc. appeals from a remand determination of the
Patent Trial and Appeal Board. In the underlying inter
partes review proceeding, the Board relied on new argu-
ment and evidence presented by Dell for the first time at
oral argument, without providing Acceleron, LLC, an
opportunity to respond. Both Dell and Acceleron ap-
pealed, and this court remanded, among other reasons, on
grounds that the Board erred when it failed to give Accel-
eron an opportunity to respond. On remand, the Board
declined to consider both Dell’s new argument and Accel-
eron’s proposed response. Dell appeals and argues that
the Board was required under our remand order and this
court’s precedent to consider both Dell’s new argument
and Acceleron’s response. We affirm.
                          BACKGROUND
                        A. The ’021 Patent
    This appeal involves a single claim of U.S. Patent No.
6,948,021 (“the ’021 patent”), owned by Acceleron. The
’021 patent is directed to a computer network appliance
containing a number of hot-swappable components that
can be removed and replaced without turning off or reset-
ting the computer system as a whole. ’021 patent, col. 1,
lines 13–16, 26–28. Figure 1 is illustrative:
DELL INC.   v. ACCELERON, LLC                            3




    As shown in Figure 1, a computer network appliance
100 disclosed in the ’021 patent includes central-
processing-unit (CPU) modules 102(a)–(e), a power mod-
ule 106, a microcontroller module 108, and an ethernet
switch module 110 connected to the backplane 104 via hot
swap connectors. A chassis 150 encloses backplane 104
and a collection of modules. The chassis may also contain
caddies 152 that hold the modules while providing air
flow from the front to the rear of the chassis. Id. col. 2,
lines 5–6; id. col. 3, lines 32–34.
    Claim 3 is the only claim at issue in this appeal.
Claim 3 depends indirectly from claim 1 via claim 2.
Claims 1, 2, and 3 read:
    1. A computer network appliance, comprising:
    a plurality of hot-swappable CPU modules, where-
    in each CPU module is a stand-alone inde-
    pendently-functioning computer;
    a hot-swappable power module;
4                                DELL INC.   v. ACCELERON, LLC



    a hot-swappable ethernet switch module; and
    a backplane board having a plurality of hot swap
    mating connectors, wherein the at least one back-
    plane board interconnects each of the CPU mod-
    ules with the at least one power module and the
    at least one ethernet switch module, such that the
    at least one power module and the at least one
    ethernet switch module can be used as a shared
    resource by the plurality of CPU modules.
    2. The computer network appliance of claim 1,
    further comprising a chassis providing physical
    support for a CPU module, the power module, the
    ethernet switch module and the backplane board.
    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.
Id. col. 9, lines 1–22 (emphasis added).
             B. Proceedings Before the Board
    On January 16, 2014, the Board instituted inter
partes review of the ’021 patent based on Dell’s petition
under 35 U.S.C. § 311 et seq (2012). 1 The primary prior
art reference relied upon by Dell was U.S. Patent No.
6,757,748 (“Hipp”). Hipp is directed to a high-density
server network in which a large number of web server
processing cards are installed within a single chassis.
Hipp, col. 3, lines 42–56. Figure 11 is illustrative:




    1   A more detailed explanation of the grounds for the
petition was presented in the previous case. See Dell Inc.
v. Acceleron, LLC, 818 F.3d 1293, 1296–97 (Fed. Cir.
2016).
DELL INC.   v. ACCELERON, LLC                               5




As depicted above, an articulating door 262 is located at
the front of the server chassis 38 and box fans 264–269
are attached to the articulating door. Id. col. 16, lines 11–
16. The box fans “draw air from the ambient environment
through articulating door 262, and exhaust through a
back plate 270 . . . .” Id. col. 16, lines 15–17. Dell’s peti-
tion identified the articulating door 262 as corresponding
to the caddies recited in claim 3 of the ’021 patent. J.A. 7.
    In its Response, Acceleron argued that “the claim re-
cited that the single chassis comprises multiple caddies,”
while Hipp “includes only a single articulating door 262.”
J.A. 11. Dell countered in its Reply that the mounting
hardware for the box fans are “caddies,” in the sense that
they are carriers for the fans and that the “two power
supply mounting mechanisms 278” are also considered
“caddies.” Id.
    At oral argument before the Board, Dell for the first
time argued that “slides,” on which power supplies 280
rest, meet the “caddies” requirement of claim 3. J.A. 229.
Acceleron made a procedural objection that Dell’s argu-
ment was not timely raised and that Acceleron should be
permitted to present evidence to rebut the new argument.
6                               DELL INC.   v. ACCELERON, LLC



The Board denied Acceleron’s procedural objection. On
December 22, 2014, the Board confirmed the validity of
claims 14–17 and 34–36 and cancelled claims 1–4, 6–13,
18–20, and 30 as either anticipated or obvious. Dell Inc.
v. Acceleron, LLC, IPR2013-00440, 2014 WL 7326580, at
*14 (P.T.A.B. Dec. 22, 2014). Specifically, the Board
found claim 3 to be anticipated by Hipp, relying exclusive-
ly on Dell’s new argument about the “slides” structure of
Hipp. Id at *6.
                     C. Dell I Appeal
    Dell appealed to this court, challenging the Board’s
validity determination of claims 14–17 and 34–36. Accel-
eron cross-appealed the Board’s cancellation of claim 20
and claim 3. With respect to claim 3, Acceleron argued
that the Board violated the Administrative Procedure Act
(“APA”) by not giving it, the patent owner, a fair oppor-
tunity to respond to the new “slides” argument that Dell
raised at oral argument.
    On March 15, 2016, this court affirmed the Board’s
validity determination of claims 14–17 and 34–36. We
vacated the cancellation of claims 3 and 20, and remand-
ed for reconsideration of claims 3 and 20. Dell Inc. v.
Acceleron, LLC (“Dell I”), 818 F.3d 1293, 1301–02 (Fed.
Cir. 2016). With respect to claim 3, the court remanded
the Board’s determination for appropriate proceedings on
the ground that “the Board denied Acceleron its procedur-
al rights by relying in its decision on a factual assertion
introduced into the proceeding only at oral argument,
after Acceleron could meaningfully respond.” Id. at 1301.
        D. Remand Proceedings Before the Board
     On remand, the Board decided not to consider the
“slides” argument presented at oral argument or in Dell’s
Reply because the argument was new and non-responsive
to Acceleron’s Response. Dell Inc. v. Acceleron, LLC,
IPR2013-00440, 2016 WL 8944607, at *4 (P.T.A.B. Aug.
DELL INC.   v. ACCELERON, LLC                              7



22, 2016). Thus, the Board considered Hipp’s articulating
door as the only structure Dell contended corresponded to
the “caddies” recited in claim 3. Id. The Board found that
claim 3 was not anticipated by Hipp, including, because
Hipp’s chassis comprises only one articulating door, while
the chassis in the ’021 patent includes multiple caddies.
Id. (“[E]ven if only one caddy were sufficient, we are not
persuaded that Hipp’s articulating door 262 meets that
requirement . . . In particular, either the Petition nor the
Reply offers any explanations as to why Hipp’s box fans
264–269 are modules.”).
     Dell appeals the Board’s decision to disregard its
“slides” contention. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A) (2012).
                         DISCUSSION
    We review the Board’s final written determinations in
accordance with the APA, 5 U.S.C. § 706(2) (2012). Dick-
inson v. Zurko, 527 U.S. 150, 152, 165 (1999). Under the
APA, we must “hold unlawful and set aside agency action,
findings, and conclusions found to be . . . arbitrary, capri-
cious, an abuse of discretion, or otherwise not in accord-
ance with law . . . [or] without observance of procedure
required by law.” 5 U.S.C. § 706(2); In re NuVasive, Inc.,
841 F.3d 966, 970 (Fed. Cir. 2016). We review the Board’s
legal conclusions de novo and its factual findings for
substantial evidence. Belden Inc. v. Berk–Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015).
    The issue before the Board on remand was whether
Hipp discloses “caddies” and therefore anticipates claim 3.
Dell argues that the Board erred on remand because it
should have considered its new “slides” argument and
provided Acceleron an opportunity to address the argu-
8                               DELL INC.   v. ACCELERON, LLC



ment. 2 Dell reasons that the Board’s failure to consider
the “slides” argument was contrary to this court’s prece-
dent and our remand order in Dell I. We disagree.
    In Dell I, we stated:
    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 argu-
    ments . . . and hearing and decision on notice,
    . . . and must allow a party to submit rebuttal evi-
    dence as may be required for a full and true dis-
    closure of the facts.
818 F.3d at 1301 (internal citations and quotations omit-
ted). This does not mean, however, that we ordered the
Board to consider Dell’s new argument and Acceleron’s
response. Rather, the court set out the requisite proce-
dures that would apply had the Board actually considered
Dell’s new evidence.
   Dell argues that NuVasive and SAS Institute, Inc. v.
ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016)
support its position because in those cases this court


    2    Dell argues that the Board improperly adopted a
new construction of the term “caddies” on remand. This
argument is unpersuasive. The Board stated that “[t]here
is no dispute between the parties as to the construction of
the term ‘caddy.’ Both parties agree that [the] term
[‘caddy’] means ‘a carrier for a module.’” Dell, 2016 WL
8944607, at *3. The Board explicitly applied the agreed-
upon construction of “caddy” in determining the patenta-
bility of claim 3. Even if this court were to find that the
Board adopted a different construction, Dell concedes that
this different construction of “caddy” would not by itself
require another remand because an independent basis
exists to affirm the Board’s decision. Reply Br. at 1.
DELL INC.   v. ACCELERON, LLC                            9



required the Board to consider new evidence on remand.
Dell draws too broad a lesson from those decisions. In
SAS, we remanded and directed the Board to provide the
parties an opportunity to present evidence and argument
about the application of the new, and ultimately correct,
claim interpretation that the Board adopted in its final
written decision after “chang[ing] theories in midstream”
with no notice (neither party disputed the Board’s original
interpretation of that term in the institution decision).
825 F.3d at 1351–52. The present case involves no such
new claim construction. In NuVasive, we noted the need
for an adequate opportunity to respond if the Board chose
to rely on a portion of a prior art reference that was not
mentioned as a basis for unpatentability before the pa-
tent-owner’s response was filed. 841 F.3d at 972. But, we
did not require the Board on remand to admit new evi-
dence in response. Id. at 975 (noting the Board is not
“preclude[d] . . . from considering the import of Michel-
son’s [previously unmentioned] Figure 18 after giving
NuVasive a full opportunity to submit additional evidence
and arguments on that point”).
    We disagree that NuVasive and SAS compelled the
Board to consider the new evidence in this instance. We
note the PTO guidelines provide that “[n]o new evidence
or arguments may be presented at the oral argument.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012). Further, in Dell I we relied upon
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359
(Fed. Cir. 2015), which explicitly held:
    We do not direct the Board to take new evidence,
    or, even, to accept new briefing. The Board may
    control its own proceedings, consistent with its
    governing statues, regulations, and practice. 37
    C.F.R. § 42.5(a). Those statutes, regulations, and
    practices embody expedition-and efficiency-based
    policies that the Board must consider in determin-
    ing the scope of the remand proceedings.
10                             DELL INC.   v. ACCELERON, LLC



Id. at 1367. 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 argu-
ment. See, e.g., Wagner v. United States, 365 F.3d 1358,
1361 (Fed. Cir. 2004) (citing Service v. Dulles, 354 U.S.
363, 388 (1957)) (“[A]n agency is bound by its regula-
tions.”); Crediford v. Shulkin, 877 F.3d 1040, 1047 (Fed.
Cir. 2017) (same).
    Dell contends that ignoring evidence of unpatentabil-
ity 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 out-
weigh 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.
                      CONCLUSION
    The Board was not required to consider Dell’s new ev-
idence presented during oral argument and did not abuse
its discretion by not considering Dell’s new evidence on
remand. The Board’s determination that Hipp does not
anticipate claim 3 of the ’021 patent was supported by
substantial evidence. We therefore affirm.
                      AFFIRMED
                         COSTS
     No costs.
