PTAB Nixes Presentation of Video-Recorded Testimony at Oral Hearing as New Evidence

By Tom Engellenner
The new AIA procedures for administratively challenging issued patents afford the parties an opportunity to present their cases at a “final oral hearing” before the three Administrative Patent Judge panel that will decide the case.  This is true for inter partes review (IPR), covered business method (CBM) review and post grant review (PGR).  However, the Patent Trial and Appeal Board (PTAB) has resisted the temptation to expand of the scope final oral hearing beyond a plain and simple occasion for each side to provide the judges with a summation of their cases.  A recent decision November 5, 2013 in the case of Nichia Corporation v. Emcore Corporation (Case IPR2012-00005, paper 65) shows the PTAB’s reluctance to even permit the parties to play clips from video-taped testimony.

The PTAB trial practice guide clearly expresses the PTO’s policy on testimony at the final oral hearing:

The Board does not envision that live testimony is necessary at oral argument.  . . . A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.

However, the guide does also note that parties may file a motion for live testimony in appropriate situations and offers the suggestion that live testimony might be permitted: “where derivation is an issue, where misconduct is alleged to have occurred during the proceeding, or where testimony is given through an interpreter.” Continue reading “PTAB Nixes Presentation of Video-Recorded Testimony at Oral Hearing as New Evidence”

What is Inconsistent Information and When Must Such Information be Disclosed?

By Kelly E. Rose
As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery.  Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory initial disclosures, (b) routine discovery and (c) additional discovery.  Of particular interest is a subcategory of routine discovery that requires a party to serve relevant information that is inconsistent with a position advanced by the party.

Rule 42.51(b)(1)(iii) requires that
“[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced during the proceeding concurrent with the filing or documents or things that contains the inconsistency.  This requirement does not make discoverable anything otherwise protected by legally recognized privileged such as attorney-client or attorney work product.  This requirement extends to inventors, corporate officers and persons involved in the preparation or filing of the documents and things.” Continue reading “What is Inconsistent Information and When Must Such Information be Disclosed?”

PTAB Issues Guidelines on Foreign Language Testimony

by Tom Engellenner
The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method review (37 C.F.R. 42.53(d)) require that “[i]f an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.” Beyond that the rules provide little guidance as to how the foreign language deposition is conducted.

Recently, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, a PTAB panel was asked to confirm that the further guidance that has evolved in interference practice should be followed. Specifically, Isis asked the PTAB to adopt the guidelines set forth in Interference No. 104,539, Paper 54. In an order issued August 7, 2013 (IPR2012-00022, Paper 55), Judge Green did just that and set out twelve specific guidelines: Continue reading “PTAB Issues Guidelines on Foreign Language Testimony”