Silence Is Not Surrender: Federal Circuit Determines that Arguments Omitted in PTAB Rehearing Request Were Not Forfeited on Appeal

In Voice Tech Corp. v. Unified Patents, LLC, No. 22-2163 (Fed. Cir. Aug. 1, 2024), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that all challenged claims of Voice Tech’s patent were unpatentable.

The patent relates to using voice commands to remotely control a computer. Unified Patents petitioned for an inter partes review, asserting that the claims would have been obvious. The Board found all challenged claims unpatentable. Voice Tech sought rehearing by the Board, which the Board denied.

On appeal, Voice Tech challenged the Board’s decision on several grounds, including that the Board misinterpreted certain claim terms. Unified Patents countered that, under 37 C.F.R. § 42.71(d), Voice Tech forfeited those arguments by not raising them in its rehearing request. The Court disagreed with Unified Patents, determining that nothing in the statute or regulations requires a party to request rehearing to preserve a right to appeal and that a party’s choice to not re-raise an argument in a rehearing request does not automatically forfeit the argument for appeal. The Court nevertheless declined to consider Voice Tech’s claim-construction arguments because Voice Tech failed to show any prejudice from the Board’s interpretations.

Voice Tech also argued that Unified Patents’ petition failed to identify a claim element, and that the Board improperly created arguments on Unified Patents’ behalf. The Court disagreed, noting that the petition cross-referenced a relevant prior-art analysis for another claim, so the Board properly adhered to the petition.