PTAB Issues Three New Precedential Opinions

March 20, 2019 – Article

The PTAB designated three decisions as precedential this week (in addition to two earlier this month), indicating that the PTO may be in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions.

Two of the decisions are related to when live testimony is allowed during oral arguments. The first, K40 Electronics LLC v. Escort Inc., is an order from 2014 where the Board explains that it “does not envision that live testimony will be necessary at many oral arguments” but that “under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge. For example, the board may occasionally require live testimony where the board considers the demeanor of a witness critical to assessing credibility.” The Board also provided procedural limitations for live testimony, explaining that only cross-examination and redirect are permitted. 

DePuy Synthes Products Inc. v. Medidea LLC, a case from January 2019, confirms that live testimony cannot be new testimony, with the Board declining to allow the inventor to testify at the hearing. The order states that because the inventor did not provide any declaratory evidence, his testimony would be new evidence, impermissible at the oral arguments stage. In other words, only declarants and counsel of record may address the panel during an oral hearing. 

The third decision, Inc. v. Uniloc Luxembourg SA deals with substitute claims and grounds for challenging a motion to amend. Refer to Oblon’s post from February 1, 2019 for a more detailed discussion of this case. In short, the Board would not let Uniloc amend its claims curing an IPR because the substitute claims were not eligible subject matter under 35 U.S.C. § 101. Although Section 101 cannot be considered during an IPR, the Board is permitted to evaluate proposed amendments under all grounds of patentability, not just based on patents and printed publications. To support this decision, the Board explained that, although 35 U.S.C. § 311 limits a Petition to grounds based only on documentary prior art, § 311 is directed to existing claims. For amended claims, the governing provision is 35 U.S.C. § 316(d), which does not similarly limit the board. This is consistent with other cases where the Board has denied substitution of proposed claim amendments based on indefiniteness. E.g., Apple Inc. v. Valencell, Inc., IPR2017-000315 (PTAB May 31, 2018).