On March 18, 2019, the Patent Trial and Appeal Board (“Board”) announced the designation of three decisions as being precedential. Two of the three decisions involve the limited situations in which live testimony can be used during a PTAB proceeding. The first is K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (“K-40”). K-40’s order provided factors that may be considered in making the determination of whether live testimony could be permitted. Generally, the Board does foresee live testimony being necessary in most situations. Live testimony would be allowed “under very limited circumstances,” wherein cross-examination of witnesses may be ordered. Here, the sole inventor of the patent in the proceeding was also the principal fact witness. “Through his declaration testimony in both cases, Patent Owner attempts to antedate the only two references (Hoffberg and Fleming III) relied on by Petitioner in its challenge to patentability. Mr. Orr’s testimony is, therefore, key, and may well be case-dispositive.” This, along with the inventor being a fact witness rather than an expert witness, is what was considered in the Board’s decision.

The second decision involving live testimony is DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (“DePuy”). DePuy’s order determined that the testimony of an inventor at the oral hearing is considered new evidence, and it is not permitted if a declaration from the inventor was not previously provided. This would thus be considered “forbidden under our Trial Practice Guide. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence and arguments. 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.”).”

The last of the decisions designated as precedential is Amazon.com, Inc. v. Uniloc Luxembourg S.A., Case IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34) (“Amazon”). This decision distinguished between the treatment of amended claims versus the treatment of existing claims in inter partes review, by determining that 311(b) does not preclude a petitioner from raising, or the PTAB from considering, other grounds of unpatentability, including § 101, as to substitute claims not yet part of a patent, in the context of a motion to amend. Here, the patent owner proposed three amended claims, which the Board found to be unpatentable. In addition to this, the Board denied the Motion to Amend, because these claims were directed to non-statutory subject matter under 101.

The patent owner made the argument that “by overruling the Board’s practice of placing on the patent owner the burden of showing patentability of amended claims in Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), the Federal Circuit also foreclosed review of proposed amended claims under § 101. Req. 3–4. Under Patent Owner’s theory, Board cases such as Ariosa Diagnostics v. Isis InnovationLimited, Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 166), considered § 101 only as part of a patent owner’s burden to show patentability of the amended claims, and the Federal Circuit’s removal of that burden “overruled the very basis for Ariosa Diagnostic’s holding that a motion to amend must address patent eligibility under § 101.” Req. 3–4. H.”

The Board countered this by stating that, as they had previously explained in their “Final Written Decision, Aqua Products makes clear that Patent Owner does not bear the burden of persuasion on issues of patentability in a motion to amend,2 but does not foreclose an analysis of whether substitute claims comply with § 101.”

Full K-40 Electronics, LLC v. Escort, Inc. can be read here:

https://www.uspto.gov/sites/default/files/documents/K-40%20Electronics%2C%20LLC%20v.%20Escort%2C%20Inc%2C%20IPR2013-00203%20%28Paper%2034%29.pdf

Full DePuy Synthes Products, Inc. v. Medidea, L.L.C. can be read here:

https://www.uspto.gov/sites/default/files/documents/DePuy%20Synthes%20Prods.%2C%20Inc.%20v.%20Medidea%2C%20L.L.C.%2C%20IPR2018-00315%20%28Paper%2029%29.pdf

Full Amazon.com, Inc., Amazon Digital Services, Inc., Amazon Fulfillment Services, Inc., Hulu, LLC, and Netflix, Inc. v. Uniloc Luxemborg S.A. can be read here:

https://www.uspto.gov/sites/default/files/documents/Amazon.com%20v.%20Uniloc%20Luxembourg%2C%20IPR2017-00948%20%28Paper%2034%29.pdf

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