PTAB Litigation 2016
Part 8 – Oral Hearing
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Oral Hearing
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Oral Hearing
• Scheduling Order will include a due date for parties to
request oral hearing;
• Request is typically granted if at least one party
requests argument;
• 45 minutes – 1 hour per side for most cases; for
consolidated (e.g., 2 patents) oral hearings, 1.5 – 2
hours per side;
• Petitioner goes first and can reserve time for rebuttal.
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Oral Hearing – Board Participants
• Typically 3 judges, some may be participating
remotely;
• Note where camera is and speak to camera, not
screen showing remote judge;
• Board is active and will usually ask questions;
• For 45 minute argument prioritize 20 – rest of time
may be consumed by questions;
• Board focuses on claim interpretation – may ask to
construe terms not briefed;
• Know the record.
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Oral Hearing - Testimony
• Testimony
• USPTO will consider requests for live testimony, case-by-case:
– Considering rule change: “The Office asked, ‘Under what circumstances,
if any, should live testimony be permitted at the oral hearing? What
changes, if any, should be made to the format of the oral hearing?’” 80
Fed. Reg. 50736 (Aug. 20, 2015).
– “Response: The Office will continue its present practice of considering
requests for oral hearings on a case-by-case basis.” Id.
• Rarely granted:
– USPTO granted one motion requesting oral testimony: see K–40
Electronics, LLC v. Escort, Inc., IPR2013–00203, Paper 34
(P.T.A.B. May 21, 2014).
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Oral Hearing – New Arguments
• New Arguments generally not allowed at oral hearing:
• “If certain testimony previously was not developed, discussed, or
explained in a party’s papers, it may not be developed, discussed,
explained, or summarized, for the first time, in the form of
demonstrative slides at final oral hearing.” CBS Interactive Helferich
Patent Licensing, LLC, IPR2013-00033, Paper 118, at 3 (Oct. 23,
2013).
• Include demonstrative exhibits in expert declaration (e.g., patent owner
response or petitioner reply declarations) to make clear that the
demonstratives are not introducing new arguments.
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Oral Hearing - Demonstratives
• Must be served 5 days prior to argument and filed by
time of argument – 37 C.F.R. § 42.70;
• Parties should try to work out objections;
• Can object via conference call request;
• Board may reserve portion of oral hearing for
discussing appropriateness of objected to
demonstratives;
• Board may use convincing demonstratives in Final
Written Decision.
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