Alert August 19, 2013

USPTO Patent Trial and Appeal Board Holds First Hearing in New Inter Partes Review Proceeding

Summary

The Patent Trial and Appeal Board heard its first hearing under the new Inter Partes Review (IPR) post-grant proceeding on Friday. The parties were allocated only an hour each to address all of the issues in the case, and the time constraint put considerable pressure on counsel to stay “on message” despite active questioning from the bench. Practitioners preparing to argue IPR challenges in the future should be fully prepared on all issues of the case, even if the argument is divided among counsel.

Approximately seven months after instituting trial in the first-ever inter partes review (IPR) proceeding under the America Invents Act, the Patent Trial and Appeal Board heard its first IPR hearing on Friday, August 16. 

In September 2012, Garmin International Inc. filed an IPR petition challenging the claims of U.S. Patent No. 6,778,074, owned by Cuozzo Speed Technologies. The patent at issue involves a speed limit indicator that displays the current speed of a vehicle and how it relates to the legal speed limit for the current location in which the vehicle is traveling. Although Garmin initially alleged more than 40 challenges to the claims under both 35 U.S.C. §§ 102 and 103 in light of seven different prior art references, the Board trimmed down the challenges to just two obviousness combinations. 

Friday’s two-hour hearing was heard by a panel of three administrative patent judges. The petitioner – Garmin – argued first, starting with claim construction and then turning to obviousness issues. Cuozzo then presented its case, first taking time to respond to Garmin’s arguments and the Board’s questions, and then by presenting its own claim construction and validity arguments. 

Both parties attempted to use demonstratives throughout the hearing to underscore their points but in the face of active questioning from the bench did not have sufficient time to rely on them heavily. Garmin was then provided an opportunity for rebuttal, and patent owner Cuozzo was offered the last word. Given the more than 400 IPR petitions filed since these proceedings were first instituted in September 2012, the oral hearing was well attended by patent practitioner observers. 

Since this was the first proceeding of its kind, it will likely set the model for all IPR hearings going forward. Unlike an appellate argument before the former BPAI, or a Markman hearing or summary judgment motion in federal court, it is apparent that parties in an IPR hearing must be fully prepared to present their entire case (including any response to opponent arguments) in a particularly compressed amount of time, even in the face of active questioning from the bench.  

Parties should also be aware that the hearing format makes it particularly difficult for the parties to address specific testimonial and documentary evidence much beyond the patent at issue and prior art references.  

Some key takeaways from the hearing:

  • The petition or patent owner’s response should set forth a proposed claim construction for each potentially disputed term.
  • The Board is particularly interested in expert testimony and notices when expert testimony is only rebutted with attorney argument.
  • Practice, practice, practice with hearing demonstratives but anticipate that only a few of them will be used. A smooth argument may depend on quickly pivoting from one topic to the next.
  • If multiple counsel are arguing, each counsel must be fully prepared to answer questions from the Board on any issue in the case.