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.”

In the Nichia case, Emcore sought authorization on the eve of the final oral hearing to use ten clips of video-recorded testimony of the Petitioner’s expert as well as their own expert, as demonstrative exhibits at the hearing.  Emcore indicated that the video-recorded testimony would show the witnesses’ demeanor, which could assist the Board in assessing the witnesses’ credibility.  Nichia opposed the motion, arguing argued that the video clips were improper demonstratives, because the video-recorded testimony was not of record, and the video clips would therefore be new evidence—i.e., evidence that has not been submitted previously in the proceeding.

The Board agreed with Nichia, noting that under 37 C.F.R. § 42.53(a), the “[p]arties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board.”  In this case, the cross examinations of Dr. Schubert (Nichia’s expert) and Dr. Goorsky (Emcore’s expert) were video-recorded but the parties submitted the transcripts of video-recorded depositions in the proceeding.

The Board further noted that neither party requested leave to file the video-recorded testimony in the proceeding and it is unclear as to why Emcore could not have requested authorization to submit the video-recorded testimony earlier:

[I]f Emcore wished the Board to consider the demeanor of Dr. Schubert, Emcore could have sought prior authorization to submit the video-recorded testimony of Dr. Schubert at the time of filing its patent owner response or reply to Nichia’s opposition to the motion to amend. Rather, Emcore waited until after both parties had filed all of their briefs—in fact, two days before final oral hearing—to seek authorization to submit clips of the video-recorded testimony, as demonstrative exhibits at final oral hearing. Upon review of the record, the Board agreed with Nichia that the video clips constitute new evidence, because the video-recorded testimony of Dr. Schubert and Dr. Goorsky has not been submitted previously in the proceeding.

The Nichia case ruling thus provides some guidance for practitioners wishing to use video-taped depositions: either reach an agreement with opposing counsel regarding the filing of the video – or seek the Board’s permission early in the proceedings.