Inaction Can Lead To Argument Forfeiture on Appeal

Written by:Kelsey S. Weinman and Jacob R. Rosenbaum

ALIVECOR, INC. v. APPLE INC.

Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board.

 Summary:  A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation through inaction.

AliveCor filed a complaint against Apple in the ITC alleging infringement of three AliveCor patents (the “AliveCor Patents”).  Apple later filed IPR petitions challenging those patents.

Before the ITC, Apple argued that the AliveCor Patents were invalid due to obviousness.  An ITC administrative law judge (ALJ) issued an Initial Determination rejecting Apple’s obviousness argument.  Specifically, the ALJ found that objective evidence supported the nonobviousness of the asserted claims.  The Initial Determination became publicly available before subsequent IPR proceedings.

During the IPRs, Apple again argued that the AliveCor Patents were invalid due to obviousness.  At no point did AliveCor inform the Patent Trial and Appeal Board (the “Board”) of the ALJ’s findings regarding objective evidence of nonobviousness.  AliveCor also did not file a formal motion with the Board seeking discovery from Apple regarding that evidence.  The Board subsequently found all claims of the AliveCor Patents unpatentable as obvious.  AliveCor appealed.

On appeal, AliveCor argued that the Board erred in its finding on unpatentability and contended that the Board’s decision should be vacated because Apple violated its discovery obligations by not disclosing to the Board the objective evidence of nonobviousness that was presented in the parallel ITC proceeding.  The Federal Circuit found that the Board’s obviousness findings were supported by substantial evidence.  Additionally, the court found that AliveCor had forfeited its argument regarding Apple’s discovery obligations by failing to raise the issue with the Board.  Moreover, the court found that AliveCor’s forfeiture was not excused by exceptional circumstances, as AliveCor could have taken steps to introduce the evidence itself but failed to act.  Accordingly, the Federal Circuit affirmed the Board’s decision.

Editor: Sean Murray