Raising A New Rationale Or Elaborating On A Previously Raised Issue?

In Everstar Merch. Co. v. Willis Elec. Co., No. 2021-1882, 2022 WL 1089909 (Fed. Cir. Apr. 12, 2022), the Federal Circuit provided guidance to distinguish between raising a new argument and elaborating on previously raised arguments in proceedings before the Patent Trial and Appeal Board ("Board"). Here it was decided that a minor point in a petition, fleshed out much more during the remaining of the proceeding, was sufficiently raised such that it must be considered by the Board in its final decision.

Everstar Merchandise Co. ("Everstar") sought Post Grant Review of U.S. Patent No. 10,222,037, owned by Willis Electric Company, Ltd. ("Willis"). Among its arguments, Everstar asserted that two prior art references, Kumada and Debladis '120, rendered the patent obvious. The parties agreed that the prior art references disclosed all elements of the claims, but disagreed about the motivation to combine the references and whether the prior art references were analogous