Order Regarding Demonstrative Exhibits IPR2013-00493


Takeaway: It is improper to present material in a party’s demonstrative exhibits that was not previously made of record in the proceeding.

In its Order, the Board sustained-in-part and overruled-in-part certain objections that Petitioner had made with respect to the propriety of certain of Patent Owner’s demonstrative exhibits. In particular, the Board sustained Petitioner’s objection to Patent Owner’s Exhibits 2006 and 2007; sustained Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 7-12 and 15 and overruled Petitioner’s objection to Patent Owner’s Exhibit 2005 as to pages 19 and 20; ordered that Patent Owner’s Exhibits 2005, 2006, and 2007 be expunged; barred Patent Owner from using during the oral hearing any material from pages 7-11 and 15 of Exhibit 2005 or any material from either Exhibit 2006 or Exhibit 2007; and authorized Patent Owner to replace Exhibit 2005 with a new demonstrative exhibit. Continue reading

Denying Request to Redact Oral Hearing Transcript IPR2013-00292, 293, 294, 295

Takeaway: The default standard in an inter partes review is that all papers filed in the proceeding are open and available for access by the public.

In its Order, the Board denied Patent Owner’s request to redact the oral hearing transcript.  Patent Owner desired to antedate certain prior art by proving an earlier conception plus due diligence up to a subsequent constructive reduction to practice.  The issue in question was discussed during an oral hearing which was open to the public. Continue reading

Granting Sua Sponte Motion to Exclude Demonstrative Exhibit IPR2013-00357

Takeaway: Any exhibits or arguments that are presented at the final oral hearing, including demonstrative exhibits, must have been presented in a prior paper.

In its Order, the Board excluded certain slides of Patent Owner’s demonstrative exhibits. Petitioner objected to those slides because they contained (1) a new picture of Figure 2 that was not presented identically in the trial history; and (2) lines which had been altered in that figure.  Patent Owner argued that the portions of the objected to slides are intended to be a tutorial on the patent at issue and are based on descriptions in its brief, but acknowledged that the graphics do not appear in the brief or other papers. Continue reading

Denying Motion to Modify Oral Hearing Date IPR2013-00401, 00404

Takeaway: If a party wishes to modify the hearing date in the scheduling order, it should do so promptly and must show good cause, which requires more than a showing that its lead and backup counsel have a conflicting district court trial.

In its Order, the Board denied Patent Owner’s request to reschedule the oral argument from the date set in the Scheduling Order dated December 19, 2013. Patent Owner requested a change in the hearing date because its lead and backup counsel had a conflicting trial in an unrelated district court litigation.  However, the Board stated that its hearing room schedule and the schedule of the panel are not amenable to rescheduling the hearing at this late a date (less than a month prior to the hearing).  Further, the proceeding is conducted on a strict statutory timeline and cannot deviate without risking to meet that timeline; therefore, the moving party must show good cause for moving the hearing date.  The Board noted that Patent Owner provided no explanation for its request other than stating its counsel has a conflicting trial date.  Specifically, Patent Owner did not explain what efforts it undertook with the district court to schedule around the hearing date and did not state that Petitioner joined its request.  The Board allowed for Patent Owner to request a conference call with the Board to seek authorization to file a motion to change the hearing date if it believes there is good cause, but cautioned that even if a motion is authorized, it will not be granted without a showing that Patent Owner is entitled to the requested relief. Continue reading

Expunging Demonstrative Exhibits IPR2013-00203

Takeaway: Demonstratives used at an oral hearing should not be duplicative of documents already in the record, and should not present new evidence or argument. Instead, they should be a visual aid to the party’s presentation.  

In its Order, the Board expunged Patent Owner’s demonstrative exhibits.  Petitioner filed objections to certain Patent Owner demonstratives.  Patent Owner stated that most of the demonstratives were duplicates of documents already in the record because it was unsure which materials it would be permitted to reference during oral argument, and that it may not rely on every page of the demonstratives. Continue reading

Order Granting Additional Briefing IPR2013-00292

Takeaway: Parties that wish to argue that the Board should employ a different claim construction standard may be required to present its arguments during the oral hearing rather than in additional briefing.

In its Order, the Board granted Patent Owner’s request to file a second Motion to Amend to correct what it argued were potential ambiguities in the proposed substitute claims in the first motion. The Board also authorized Patent Owner to raise, during the oral hearing, the issue of which standard of claim construction should be employed. Continue reading

Order Denying Motion to Stay Petitions IPR2013-00194, IPR2013-00195, CBM2013-00013

Takeaway: The Board is unlikely to stay PTAB proceedings pending appeal of a district court’s finding of invalidity, particularly where the issues in the district court and in front of the Board are different.

In its Order, the Board denied Patent Owner’s request to stay two related inter partes review proceedings and a related covered business method review in light of a district court’s finding that all of the challenged patents were invalid as being indefinite.  In light of its ruling regarding the requested stay, the Board granted the parties’ previous request for oral hearing. Continue reading

Granting Motion for Live Testimony at Hearing IPR2013-00203

Takeaway: The Board may grant a request for live testimony by the sole inventor as a fact witness on the issue of antedating the only references relied on by a petitioner because the testimony would likely be dispositive.

In its Order, the Board granted Patent Owner’s request for live testimony from its named inventor at the final oral argument. Only under very limited circumstances will cross-examination of witnesses be ordered to take place in the presence of an administrative patent judge. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012). For example, the Board may occasionally require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. Id. Factors to consider when determining the importance of the witness’s live testimony include (1) whether the testimony may be case-dispositive, and (2) whether the witness is a fact witness, because the credibility of such a witness depends on demeanor. Continue reading

Denying Request for Rebuttal Argument During Oral Hearing IPR2013-00116

Takeaway: A patent owner will not be allowed to present rebuttal argument during oral hearing based solely on arguing secondary considerations because evidence of secondary considerations is not an issue distinct from a petitioner’s unpatentability proposition.

In its Order, the Board denied Patent Owner’s request to present rebuttal argument during the oral hearing. In inter partes review oral argument, the petitioner generally argues first, followed by the patent owner, after which the petitioner may present rebuttal argument. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The argument order may be reversed, such as when the only issue in the case is whether proposed substitute claims are patentable. Id. The argument order thus follows the burden of proof; the party with the burden argues first and may argue last by way of rebuttal. See id. When both parties carry burdens, i.e., when the petitioner has the burden of proving propositions of unpatentability of patented claims by a preponderance of the evidence (see 35 U.S.C. § 316(e)), and the patent owner has the burden of showing patentability of proposed substitute claims (see 37 C.F.R. §§ 42.121; 42.20(c)), each party is given a rebuttal opportunity. Continue reading