James Donald Smith, the Chief Administrative Patent Judge of the Patent Trial and Appeal Board (PTAB) was the keynote speaker at the Boston Patent Law Association (BPLA) Annual Meeting on December 11, 2013 and gave a comprehensive, albeit somewhat tongue-in-check, report on the state of the PTAB.

Judge Smith remarked that early in his career as an IP attorney he worked for Nokia and that his employment often took him to Nokia’s headquarters in Finland.  He claimed to have met Mr. and Mrs. Claus and to have spent many hours with the Clauses at their summer home and reindeer reserve in Lapland.

Santa apparently gave Judge Smith advice that he has followed in overseeing the PTAB, the new appellate body established by the America Invents Act to hear challenges to issued patents as well as patent application appeals.
Continue Reading PTAB Chief Judge Smith Shares Santa’s Secrets with Boston Patent Attorneys

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.”
Continue Reading PTAB Nixes Presentation of Video-Recorded Testimony at Oral Hearing as New Evidence