By Matthew L. Cutler, Principal
One of the most litigated aspects of inter partes review proceedings is the issue of whether an argument presented in a petitioner reply or at oral hearing is “new.” This issue arose in Level 3 Communications, LLC v. AIP Acquisition LLC, IPR2013-00296, Paper 42, at 9-10, wherein the Board discussed what will and will not be allowed in terms of new arguments at oral hearing.
Patent Challenger objected to four arguments asserted by Patent Owner during oral hearing:
- Reliance on a case not yet of record;
- A previously-unasserted argument of unpredictable results;
- A new argument regarding a reference of record; and
- Reference to a specific page of reference of record.
Order at 9.
The Board began by addressing Patent Owner’s reliance on a case at oral hearing that had not been previously discussed in the trial. Because Patent Challenger had no opportunity to address the new case, the Board sustained an objection to its use in this proceeding. Id. at 9.
Second, Petitioner objected to Patent Owner’s argument that the patent-at-issue disclosed unpredictable results and a characterization of the claimed invention. Patent Owner countered that its arguments were made in response to a new argument in Patent Challenger’s reply brief and should, therefore, be allowed. The Board sided with Petitioner, finding that there are no exceptions to the rule that new arguments may not be raised during oral hearing, even if in reply to another new argument. Accordingly, the Board sustained these objections, as well. Id. at 9-10.
Lastly, the Board addressed the fourth objection, listed above, where Patent Owner referenced a specific page of a reference of record during oral hearing. The Board noted that the specific page of the reference was previously admitted as evidence and Petitioner had access to it. Further, the reference citation was in support of a previously-asserted argument. Accordingly, the Board overruled this last objection. Id. at 10.
The Board reiterated its rule that no new arguments can be presented during oral hearing, disallowing arguments which depended on new references or which were not previously advanced. However, if argument or evidence relied upon were previously presented, the Board will allow discussion of it during oral hearing.