Denying Request for Rebuttal Argument During Oral Hearing IPR2013-00116

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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.

In this case, Patent Owner did not propose any substitute claims and consequently does not bear a burden of proof. Patent Owner argued that it bears the burden of proof as to evidence of secondary considerations of nonobviousness. However, the Board stated that evidence of secondary considerations is not an issue distinct from, but is merely evidence related to, Petitioners’ unpatentability propositions. Thus, Petitioner is the only one with the burden of proof, and thus is the only one that will receive rebuttal argument.

Gnosis S.P.A., Gnosis Bioresearch S.A., and Gnosis U.S.A., Inc. v. South Alabama Medical Science Foundation, IPR2013-00116
Paper 61: Order regarding who presents rebuttal argument during oral hearing
Dated: March 12, 2014
Patent 5,997,915
Before: Jacqueline Wright Bonilla, Scott E. Kamholz, and Sheridan K. Snedden
Written by: Kamholz