Under 37 C.F.R. § 42.70, a party may request oral argument on an issue raised in a paper during an IPR, CBM or PGR proceeding. Demonstrative exhibits may be used at the oral argument. Oral arguments occur after the petitioner reply is filed and prior to the final written decision.
Snyopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 49 (PTAB Oct. 31, 2013) (representative). Order sets forth the conduct of the oral hearing and the time period for service of demonstratives.
Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 63 (PTAB Dec. 5 2013) (representative). Order sets forth the conduct of the oral hearing including possible reservation of rebuttal time for patent owner on addressing the motion to amend since patent owner is the proponent of the motion.
Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper 36 (PTAB Apr. 10, 2014) (representative). Order sets forth conduct of a consolidated oral hearing for two proceedings involving the same patent and similar prior art.
Cyanotech Corp. v. The Board of Trustees of the Univ. of Ill., IPR2013-00401, Paper 50 (PTAB June 18, 2014). The Board denied patent owner’s request to reschedule the oral hearing because its lead and backup counsel had a conflict with another trial in an unrelated district court litigation. The Board indicated that it would not change the date of the oral hearing absent a showing of good cause, in view of the strict statutory timeline and the schedules of the judges. Patent owner’s explanation that its counsel have a conflict is not sufficient, particularly because patent owner has been aware of the oral hearing date for approximately seven months before its request.
Toyota Motor Corp. v. Leroy G. Hagenbuch, IPR2013-00483, Paper 35 (PTAB Aug. 25, 2014). The Board denied patent owner’s request to have its back-up counsel, who was admitted pro hac vice, conduct the oral hearing for patent owner, rather than its lead counsel. Patent owner indicated that it did not want to spend the money for its lead counsel to travel to attend the oral hearing. Noting that its previous trial hearing order stated that “The Board expects lead counsel for each party to be present at oral hearing,” the Board reasoned that this “statement is short of a requirement that lead counsel be present.” However, because patent owner’s backup counsel is not a registered practitioner before the PTO, the Board expected lead counsel to attend. “Patent Owner’s general desire to conserve cost has not persuaded us to deviate from that stated expectation.”
Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00539, Paper 25 (PTAB Oct. 10, 2014). Petitioner requested an oral hearing. Patent owner did not request an oral hearing. Instead, patent owner asked the Board if it could be excused from attending. Patent owner’s IPR counsel “informed the Board that its client did not wish to undertake the financial burden involved in counsel preparing for and attending the oral hearing, and wished to rest on its previously filed Response to the Petition.” The Board indicated that petitioner has a statutory right to a hearing, and encouraged patent owner to attend the oral hearing to assist the Board in deciding the issues presented in the proceeding. Patent owner declined the possibility of holding the oral hearing telephonically, arguing that even a telephonic hearing would not address patent owner’s financial considerations. The Board emphasized the importance to patent owner’s counsel to attend the hearing to answer any questions the Board may have or respond to petitioner’s arguments. The Board also stressed its expectation that, so long as patent owner is represented by counsel before the Board, counsel will attend all proceedings which materially affect patent owner’s interests. Patent owner indicated that it would file a motion for pro hac vice admission of its general counsel attend the oral hearing, in place of currently designated counsel.
Olympus America Inc. v. Perfect Surgical Techniques, Inc., IPR2014-00233, Paper 45 (PTAB Jan. 27, 2015). The Board denied petitioner’s request to reschedule the oral hearing so that petitioner’s back-up counsel could attend the hearing. Petitioner argued that its back-up counsel will be out of the country on a trip that was planned before the scheduling order was issued. The Board declined the request because petitioner failed to raise the request for seven months, and petitioner raised no objection to the scheduling orders. The Board therefore denied the request as untimely.