February 3, 2017Newsletter

This Week at the Board - February 3, 2017

PTAB Denies Motion to Present Live Testimony

In IPR2016-00136, the PTAB denied Patent Owner’s motion to present live testimony at oral argument. Patent Owner requested authorization to present live testimony of an individual it identified as an expert witness. In its motion, Patent Owner had identified six topics for the proposed testimony. It also alleged that live testimony was needed because Petitioner had attacked the individual’s credibility, an allegation that Petitioner denied.

The Board began its discussion by noting that it did not envision live testimony would be necessary at many oral arguments. The Board further stated “live testimony will be necessary only in limited circumstances and [that it] intends to approach requests for live testimony on a case-by-case basis.” Live testimony, however, may occasionally be allowed “where the Board considers the demeanor of a witness critical to assessing credibility.” One factor the Board considers in determining whether live testimony will be helpful is whether the individual is a fact witness or an expert witness. “The credibility of experts often turns less on demeanor and more on the plausibility of their theories.” Because Patent Owner’s expert witness had already opined on the topics on which Patent Owner sought live testimony, and because the Board was not persuaded the individual’s credibility had been attacked, it denied the motion.

A link to the PTAB’s Decision is provided here.

PTAB Authorizes Refiling and Supplementation of Preliminary Response

In IPR2017-00067, the PTAB granted Patent Owner’s request for authorization to refile and supplement its Preliminary Response. During a January 25, 2017 conference call between counsels and judges, Patent Owner explained that, due to an internal docketing error, two deadlines were indicated for the filing of the Preliminary Response. One, a January 13 deadline, was mistakenly based on the filing date of the Petition, and the other was correctly based on the Notice of Filing Date Accorded to the Petition. Patent Owner filed its Preliminary Response on January 13, erroneously believing that date to be the correct deadline. Patent Owner’s Counsel asserted he was in the process of drafting an additional argument regarding the reasonable likelihood of success when his colleague filed the initial preliminary response. The Board determined the prejudice to Patent Owner, if it were not permitted to address reasonable likelihood of success, outweighed any prejudice to Petitioner. As such, it authorized Patent Owner to refile its Preliminary Response, but limited supplementation to arguments and evidence relating to reasonable likelihood of success.

A link to the PTAB’s Order is provided here.

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