United States Court of Appeals 

for the Federal Circuit ______________________ 

DELL INC.,

Appellant

v.

ACCELERON, LLC,

Cross-Appellant

______________________ 

2015-1513, -1514

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 

IPR2013-00440.

______________________ 

Decided: March 15, 2016 

______________________ 

 PAULA HEYMAN, Baker Botts, LLP, Austin, TX, argued 

for appellant. Also represented by KEVIN J. MEEK,

CATHERINE GARZA, BRETT J. THOMPSEN. 

 NORMAN ANDREW CRAIN, Thomas|Horstemeyer LLC, 

Atlanta, GA, argued for cross-appellant. Also represented 

by ROBERT GRAVOIS, KENNETH ANTHONY KNOX. 

______________________ 

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

TARANTO, Circuit Judge. 

Acceleron, LLC owns U.S. Patent No. 6,948,021, 

which discloses a computer-network appliance containing 

several hardware modules that can be removed and 

replaced while the appliance remains on. The Patent 

Trial and Appeal Board of the Patent and Trademark 

Office instituted inter partes review of the ’021 patent 

based on Dell Inc.’s petition under 35 U.S.C. § 311 et seq. 

After conducting the review, the Board confirmed the 

validity of claims 14–17 and 34–36. Dell appeals those 

rulings, primarily challenging the Board’s finding that the 

key prior-art reference fails to disclose a particular claim 

element. Acceleron, for its part, appeals the Board’s

cancellation of claims 3 and 20 as anticipated. As to claim 

20, Acceleron challenges the Board’s claim construction, 

and as to claim 3, Acceleron challenges as procedurally 

improper the Board’s reliance on a basis first raised 

during the oral argument before the Board. 

We affirm the Board’s confirmation of claims 14–17 

and 34–36. We vacate the Board’s cancellation of claim 

20 and remand for reconsideration of anticipation under 

the correct claim construction. We vacate the cancellation 

of claim 3 and remand for reconsideration of anticipation

as appropriate. 

BACKGROUND

The ’021 patent discloses a computer-network appliance containing a number of hot-swappable components, 

meaning that those components can be removed and 

replaced without turning off or resetting 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, the hot-swappable components 

disclosed in the ’021 patent include central-processingunit (CPU) modules 102(a)–(e), a power module 106, a 

microcontroller module 108, and an ethernet switch 

module 110. Each of those modules is connected to a 

common backplane board 104. A chassis 150 encloses the 

board and 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 20, one of the claims at issue here, reads:

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

FIG. 1 (’021 PATENT) 
4 DELL INC. v. ACCELERON, LLC

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. 

Id., col. 10, lines 18–33. 

Claim 1, which is not itself at issue here, is similar to 

claim 20 in all ways relevant to this appeal (though it 

does not require a microcontroller module). Id., col. 9, 

lines 2–15. Claim 3, which is at issue here, depends 

indirectly (via claim 2) on claim 1 and adds: 

wherein the chassis comprises caddies providing 

air flow from the front to the rear of the chassis.

Id., col. 9, lines 20–22. 

The other claims at issue here involve the ’021 patent’s disclosure of interactions between the claimed 

computer-network appliance and other devices on the 

network to which the appliance is connected. In particular, the patent describes a CPU module that includes a 

basic input/output system (BIOS) for, among other things,

instructing a “network attached storage (NAS)” to locate 

an operating system from which to boot the CPU module 

remotely. Id., col. 2, lines 23–29. Claim 14, the key NAS 

claim at issue here, depends on claim 1 and adds:

wherein a CPU module comprises hardware BIOS 

for configuring the CPU module and instructing a 
DELL INC. v. ACCELERON, LLC 5

network attached storage (NAS) to locate an operating system (OS) from which to boot.

Id., col. 9, lines 63–67. Claims 15–17 are similar to claim 

14 in that they involve “a CPU module [ ] configured to 

boot remotely from an OS located in an NAS,” id., col. 10, 

lines 1–11, as are claims 34–36, which involve “locating 

an OS in an NAS to boot the CPU module,” id., col. 12, 

lines 24–38. 

Dell petitioned for inter partes review of the ’021 

patent under 35 U.S.C. § 311(a). As relevant here, Dell 

argued that U.S. Patent No. 6,757,748 to Hipp anticipates 

claims 3, 14–17, and 20 and that claims 34–36 would have 

been obvious over Hipp in view of U.S. Patent No. 

6,157,974 to Gasparik. Gasparik’s teachings are not at 

issue in this appeal.

The primary reference, Hipp, describes a network interface card that coordinates traffic between multiple web

server processing cards over one or more networks. ’748 

patent, col. 2, lines 21–23. Each web server processing 

card is a single-board computer, id., col. 7, line 58, and 

includes a BIOS with instructions for sending information 

from a program to a hardware device, id., col. 10, lines 

47–51. Hipp also discloses a storage server providing 

“network attached storage (NAS),” id., col. 5, lines 35–36, 

chip sets on the web server processing cards capable of 

booting from a local-area network, id., col. 9, lines 61–62, 

and web server processing cards capable of running on 

different operating systems, id., col. 8, lines 23–30. 

Hipp’s Figure 12 shows a chassis encasing web server 

processing cards 132–42 and 32 and power supplies 280:

DELL INC. v. ACCELERON, LLC 7

raised in Dell’s reply and to seek authorization to move to 

strike those arguments or, in the alternative, permission 

to file a sur-reply. The Board refused to hold a conference 

call and denied Acceleron authorization to move to strike. 

The Board heard oral argument, as authorized by 35 

U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70. During the oral 

argument, Dell continued to rely on Hipp’s articulating 

door 262 and power supply mounting mechanisms 278 as 

caddies, but it also added a new argument. For the first 

time it contended that Hipp’s Figure 12 shows (unlabeled) 

“slides” located below the power supplies 280 and that 

such slides also constitute caddies. Acceleron disagreed 

with that contention on its merits and also objected on the 

procedural ground that Dell had never before identified 

the alleged slides as caddies. 

In its final written decision under 35 U.S.C. § 318(a), 

the Board determined, among other things, that claims 

14–17 survived Dell’s anticipation challenge and claims 

34–36 survived Dell’s obviousness challenge, but that 

claims 3 and 20 are anticipated by Hipp. Dell Inc. v. 

Acceleron, LLC, IPR2013-440, 2014 WL 7326580, at *14

(PTAB Dec. 22, 2014). As to the upheld claims: The Board 

found that Hipp does not meet the claim requirement of a 

BIOS programmed to instruct “a network attached storage (NAS)” to locate an operating system from which to 

boot a CPU module. On that basis the Board upheld 

claim 14. Finding that Dell made no materially different 

arguments for claims 15–17 and 34–36, the Board upheld 

those claims too. 

The Board found that claim 20 is anticipated by Hipp. 

The Board concluded that claim 20 does not require the 

microcontroller module to be programmed for remote 

polling, but requires only that the claimed dedicated 

ethernet path would allow remote polling if the microcontroller module were so programmed. Under that construction, the Board found that Hipp meets the claim 
8 DELL INC. v. ACCELERON, LLC

element involving polling because Hipp’s disclosed I2C 

bus could be used for polling. 

The Board found that claim 3 is anticipated by Hipp. 

The Board relied exclusively on its agreement with Dell’s 

contention that Hipp Figure 12 shows “slides”—the Board 

used a plural—that are caddies as required by claim 3. 

Dell, 2014 WL 7326580, at *6. It concluded that Dell had 

pointed to that structure in Figure 12 in its reply and 

therefore rejected Acceleron’s argument that Dell’s contention was improperly presented for the first time at oral 

argument and therefore should be disregarded. 

Dell appeals under 35 U.S.C. § 319, challenging the 

Board’s confirmation of claims 14–17 and 34–36. Acceleron cross-appeals the cancellation of claim 20 and claim 

3. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

We review an anticipation determination and factual 

findings underlying a non-obviousness determination for 

substantial evidence, and we review an ultimate determination of non-obviousness de novo. Belden Inc. v. BerkTek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); In re 

Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009). As to 

claim construction, “[t]here being no dispute here about 

findings or evidence of facts extrinsic to the patent, 

whether facts about outside-the-patent understandings of 

technical words or other facts, we conduct a de novo 

review of the Board’s determination of the broadest 

reasonable interpretation of the claim language.” 

Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 

1356, 1360 (Fed. Cir. 2015). We review the Board’s procedures for compliance with the Administrative Procedure 

Act, 5 U.S.C. § 551 et seq. See Belden, 805 F.3d at 1080.

We first consider the Board’s finding as to the teaching of Hipp relevant to claims 14–17 and 34–36. We then 

review the Board’s rulings on claim 20 and claim 3.
DELL INC. v. ACCELERON, LLC 9

A 

The Board found that Hipp does not disclose a CPU 

module that includes a BIOS for instructing a “network 

attached storage” to locate an operating system from 

which to boot the CPU module, as required by claim 14. 

That finding is supported by substantial evidence, and we 

therefore affirm the Board’s non-anticipation ruling as to

claim 14 and claims 15–17 and its non-obviousness ruling 

as to claims 34–36. 

We begin with claim 14. The Board accepted Dell’s 

contention that Hipp discloses (a) a CPU module (“web 

server processing card”) that includes a BIOS, can run on 

different operating systems, and can boot from a localarea network and (b) a server 54 that “provides network 

attached storage (NAS)” among the devices on the network. See Dell, 2014 WL 7326580, at *8 (citing Hipp, col. 

5, lines 35–38; id., col. 8, lines 26–30; id., col. 9, lines 61–

62). But the Board had ample evidence to find those facts 

not to be enough to meet the key claim 14 requirement at 

issue. 

Acceleron’s expert, Mr. Putnam, explained that, even 

if Hipp teaches that the CPU can boot from software 

located somewhere on the network, “there is no specific 

teaching or suggestion [in Hipp] to boot the web server 

cards from the NAS or to instruct the NAS to locate an 

operating system from which to boot.” J.A. 1768, ¶ 60

(emphases added). No evidence required the Board to 

reject Mr. Putnam’s reading of Hipp. Dell’s expert, Dr. 

Horst, did not establish the contrary. Indeed, he observed 

that devices on the Hipp network other than the NAS—a 

non-volatile storage device, legacy system, and application 

server—each could store software for the booting. And

Dell agrees that a skilled artisan would understand 

“network attached storage” in Hipp (as in the ’021 patent) 

to refer to a specific kind of storage device, not to cover 
10 DELL INC. v. ACCELERON, LLC

any device on the network that stores information. Oral 

Arg. at 1:30–2:06.

Thus, the Board could properly find that Hipp does 

not explicitly or implicitly describe its web server processing cards as programmed to be capable of remotely 

booting from the NAS. For anticipation purposes, the 

absence of such a teaching makes it immaterial whether, 

as Dell contends, a user of the Hipp system could modify 

the system to activate such remote booting. See Nazomi 

Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339, 1345–47 

(Fed. Cir. 2014); Typhoon Touch Techs., Inc. v. Dell, Inc., 

659 F.3d 1376, 1380–81 (Fed. Cir. 2011); Finjan, Inc. v. 

Secure Computing Corp., 626 F.3d 1197, 1204–05 (Fed. 

Cir. 2010); Fantasy Sports Props., Inc. v. Sportsline.com, 

Inc., 287 F.3d 1108, 1118–19 (Fed. Cir. 2002). We affirm 

the Board’s finding that Hipp does not anticipate claim 

14.

The Board determined that Hipp does not anticipate 

claims 15–17 for essentially the same reasons. Dell, 2014 

WL 7326580, at *10. We affirm that determination, 

because Dell did not meaningfully present a challenge to 

claim 15 separate from its claim 14 challenge. Although 

Dell now contends that textual differences between claims 

14 and 15 required the Board to conduct independent 

analyses, Dell did not, in its petition to the Board, seek 

different constructions for those two claims or identify 

how any differences mattered for purposes of the anticipation analysis. Nor, after institution, did Dell argue anticipation separately for claims 14 and 15. Because Dell 

presented claims 14 and 15 as rising and falling together 

before the Board, the Board did not err in analyzing them

together and drawing the same conclusion for claim 15 as 

for claim 14. And because claims 16 and 17 depend on 

claim 15, they too are not anticipated.

The Board likewise determined that claims 34–36 

would not have been obvious over Hipp and Gasparik for 
DELL INC. v. ACCELERON, LLC 11

the same reasons that Hipp did not anticipate claim 14. 

Before the Board, Dell did not develop an argument for 

the invalidity of claims 34–36 separate from its arguments concerning claims 14–17. See Oral Arg. at 7:48–

8:36. For that reason, we also affirm the Board’s conclusion that those claims would not have been obvious over 

Hipp and Gasparik.

B 

Claim 20 requires “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.” ’021 patent, col. 10, 

lines 24–29 (emphasis added). As Dell and Acceleron 

agree, the dedicated ethernet path itself is merely a 

conduit: it does not remotely poll but instead provides a 

connection for the microcontroller module to remotely 

poll. Acceleron contends that claim 20 can only be reasonably construed to require that the microcontroller 

module actually be configured for remote polling. Dell 

contends, and the 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. 

We agree with Acceleron.

The Board’s construction runs counter to the claimconstruction principle that meaning should be given to all 

of a claim’s terms. Bicon, Inc. v. Straumann Co., 441 F.3d 

945, 950 (Fed. Cir. 2006); Innova/Pure Water, Inc. v. 

Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 

(Fed. Cir. 2004). As Dell has conceded, the Board’s reading of claim 20 denies any substantial meaning to “remotely poll.” Oral Arg. at 18:30–19:00. The Board’s 

construction treats the claim as if it said simply that the 

ethernet path “provides the microcontroller module with a 
12 DELL INC. v. ACCELERON, LLC

connection to the CPU module, the power module and the 

ethernet switch module.” Such a connection could be used 

for a wide range of communications, including remote 

polling. But the claim calls out one specific kind of communication. It is unreasonable to deny effect to the 

“remotely poll” language, which naturally indicates that 

the microcontroller module is actually configured to 

communicate in that way.

Claim 22, which depends on claim 20, supports (without unambiguously demanding) the requirement that the 

microcontroller module be configured for remote polling. 

Claim 22 adds that “the microcontroller module polls the 

CPU module on the status of an OS.” ’021 patent, col. 10, 

lines 36–38 (emphases added). That the microcontroller

module in claim 22 actually polls the CPU module suggests that the microcontroller module in claim 20 also 

polls—and thus is configured for polling—the modules 

listed in that claim. Claim 22’s narrowing of claim 20 is 

naturally understood as specifying the subject of the 

polling: the status of an operating system. 

The specification is significant, too. It states that 

“[t]he microcontroller module uses a dedicated ethernet 

path . . . to remotely poll the health of the power module 

106, the ethernet switch module 108 and the CPU modules 102(a)–102(e).” Id., col. 7, lines 62–65 (emphasis 

added). That the specification’s most direct support for 

the claim 20 limitation speaks of the microcontroller 

actually engaging in remote polling supports reading the 

claim language to require that the controller be configured for such remote polling. Further support along 

similar lines comes from other passages. Id., col. 7, line 

65, through col. 8, line 2 (“The microcontroller module 

communicates with other modules using an I2C bus that 

gathers status information, logs the results and provides 

the log to the management software either actively 

(should a failure is [sic] detected) or as part of a routine 

poll.”); id., col. 8, lines 2–5 (“The microcontroller module 
DELL INC. v. ACCELERON, LLC 13

108 also gathers information relating to the voltage levels, 

CPU temperatures, fan RPMs and CPU module OS 

stability.”). 

In context, we conclude, the Board’s construction of 

claim 20 is unreasonable. Because the Board did not find 

that Hipp anticipates claim 20 under the correct construction, we vacate the Board’s cancellation of claim 20 and 

remand for reconsideration under that construction.

C 

The Board found claim 3 to be anticipated by Hipp. 

For the required “caddies” element, the Board relied 

exclusively on what it found to be “slides” shown (without 

separate numbering) in Figure 12 of Hipp as lying beneath the power supplies 280. That structure was first 

identified as meeting the “caddies” claim limitation during the oral argument before the Board. We vacate the 

Board’s ruling, holding that the Board denied Acceleron 

notice and a fair opportunity to respond to this basis of 

cancellation.

 “A patent owner in [Acceleron’s] position is undoubtedly entitled to notice of and a fair opportunity to meet 

the grounds of rejection.” Belden, 805 F.3d at 1080. For a 

formal adjudication like the inter partes review considered here, 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. 

§ 554(b)(3), must provide “all interested parties opportunity for the submission and consideration of facts [and] 

arguments . . . [and] hearing and decision on notice,” id.

§ 554(c), and must allow “a party . . . to submit rebuttal 

evidence . . . as may be required for a full and true disclosure of the facts,” id. § 556(d). Reflecting those fundamental requirements, 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. No new evidence or arguments 
14 DELL INC. v. ACCELERON, LLC

may be presented at the oral argument.” Office Patent 

Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 

14, 2012). 

 In this case, 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. In its petition, Dell argued that the articulating door 262 in Hipp’s 

Figure 12 performs the same function as claim 3’s caddies. In its post-institution reply, Dell added that the 

mounting mechanisms 278 in Hipp’s Figure 12 constitute

a caddy. It was only at oral argument before the Board

that Dell pointed to the structure on which power supplies 

280 rest in Hipp’s Figure 12 as meeting the “caddies” 

requirement of claim 3. Acceleron was given no prior 

notice of that contention. The oral argument presented no 

opportunity for Acceleron to supply evidence, whether 

expert or lay or documentary evidence, about what the 

Hipp Figure 12 “slides” are (even if there is more than 

one) and whether they meet all the claim requirements, 

including the requirement that they allow air flow from 

the front of the chassis to the rear. Yet the Board relied 

on that basis alone for an essential part of its anticipation 

ground of decision. 

In its final written decision, the Board dismissed Acceleron’s procedural objection (made at oral argument), 

concluding that Dell had pointed to the “slides” in its 

reply. We need not address under what circumstances a 

cancellation may rely on a key factual assertion made for 

the first time in a petitioner’s reply. In this case, contrary 

to the Board’s conclusion, the key factual assertion was 

not in fact made in Dell’s reply, but only at oral argument. 

Acceleron has not had the required opportunity to present 

evidence on whether the Hipp “slides” meet the claim’s 

requirements. Because Dell has not shown in this court 

that there can be no genuine factual dispute on that issue, 

we vacate the Board’s cancellation of claim 3 and remand 
DELL INC. v. ACCELERON, LLC 15

for further proceedings on anticipation of claim 3. See

Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 

1359, 1367 (Fed. Cir. 2015). 

CONCLUSION

For the foregoing reasons, we affirm the Board’s 

upholding of claims 14–17 and 34–36; vacate the Board’s 

cancellation of claim 20 and remand for consideration of

that claim under the proper construction; and vacate the 

Board’s cancellation of claim 3 and remand for appropriate proceedings on that claim.

Costs awarded to Acceleron. 

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED