First Inter Partes Review Oral Hearing

Authored by Michelle Carniaux and Michael E. Sander

On Friday, August 16, 2013, the Patent Trial and Appeal Board held its first oral hearing for an inter partes review. The hearing, for IPR2012-00001, lasted just over two hours with both sides each given approximately one hour for their argument. Each side took approximately 40 minutes for their initial argument and saved 20 minutes for rebuttal. The subject matter of the patent was a speedometer with a speed limit indicator based on the car’s current location.

The petitioner proceeded first, outlining their claim construction analysis and arguments in support of the grounds of invalidity. They discussed each prior art reference at issue, outlining their obviousness combinations and the motivations to combine the references.

Next, the patent owner proceeded with their response. The Board interrupted the patent owner’s presentation, asking many pointed questions. At times, the Board requested the patent owner to provide “yes” or “no” answers. In addition, the Board raised many hypothetical questions in an effort to determine the scope of the patent owner’s proffered claim constructions. The Board gave the patent owner an additional five minutes for rebuttal due to the numerous questions that the Board raised.

During the rebuttal, the parties spent most of their time discussing the patent owner’s motion to amend claims. The petitioner argued that the patent owner’s amendments were broader than the original claims and accordingly, their motion should be denied. Again, the Board asked pointed questions and requested “yes” or “no” answers from the patent owner, and raised several hypotheticals to determine what exactly what their amended claims would cover.

The patent owner ended the proceeding arguing that the patent was entitled to an earlier priority date due to the inventor’s pre-filing activity. In particular, the patent owner discussed at length the inventor’s alleged diligence in reduction to practice and filing the patent application.

Overall, the first inter partes review oral hearing demonstrated that the Board was well prepared to question the parties on specific terms in the patent, details of the prior art references and motivations to combine, and legal issues such as an inventor’s diligence in reduction to practice.