{"id":1720,"date":"2017-08-28T23:56:31","date_gmt":"2017-08-29T03:56:31","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1720"},"modified":"2017-09-03T00:13:17","modified_gmt":"2017-09-03T04:13:17","slug":"a-reasonable-adjudicator-would-have-wanted-to-review-this-evidence","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1720","title":{"rendered":"“A Reasonable Adjudicator Would have Wanted to Review this Evidence.”"},"content":{"rendered":"

In Ultratec, Inc. v. Captioncall, LLC.<\/a>, [2016-1706, 2016-1707, 2016-1708, 2016-1709, 2016-1710, 2016-1712, 2016-1713, 2016-1715, 2016-2366] (August 28, 2017), the Federal Circuit vacated and remanded Board decisions invalidating Ultratec’s patents relating to systems for assisting deaf or hard-of-hearing\u00a0users to make phone calls, in a group of IPRs, finding that the Board failed to consider material\u00a0evidence and failed to explain its decisions to exclude the\u00a0evidence.<\/p>\n

Caption call submitted the testimony of an expert,\u00a0Benedict Occhiogrosso, in the IPR’s. \u00a0Ultratec attempted to\u00a0introduce conflicting trial testimony Occhiogrosso. \u00a0Ultratec moved to supplement the record with the conflicting\u00a0Occhiogrosso trial testimony, but because Ultratec did not first request authorization to file the motion,\u00a0the Board expunged the\u00a0motion from the record.<\/p>\n

Within a week of the jury trial in which Occhiogrosso testified, Ultratec\u00a0requested authorization to file a motion to submit portions\u00a0of Mr. Occhiogrosso\u2019s trial testimony to the Board.\u00a0Ultratec alleged that Mr. Occhiogrosso\u2019s trial testimony\u00a0addressing a prior art reference was inconsistent with his\u00a0IPR declarations. \u00a0The Board held a conference call to consider Ultratec\u2019s\u00a0request for authorization to file a motion to supplement\u00a0the IPR record with Mr. Occhiogrosso\u2019s trial\u00a0testimony, but did not review the testimony when\u00a0deciding whether it could be admitted. The Board denied the request, promising a written order that was never provided.<\/p>\n

After refusing to admit\u00a0Occhiogrosso’s trial testimony,\u00a0the \u00a0oard issued final written decisions, holding that\u00a0every challenged claim was either anticipated or would\u00a0have been obvious, relying heavily on the Board\u2019s belief that Occhiogrosso was a\u00a0credible witness, citing his declaration more than thirty times, at least once as to each of the eight patents.<\/p>\n

Under the PTO\u2019s regulations, a party\u00a0seeking to submit supplemental information more than\u00a0one month after the date an IPR is instituted must request\u00a0authorization to file a motion to submit the information. \u00a037 C.F.R. \u00a7 42.123(b). The request to submit new
\ninformation must show: (1) why the supplemental information\u00a0reasonably could not have been obtained earlier,\u00a0and (2) that consideration of the supplemental information\u00a0would be in the interests of justice. \u00a0The PTO\u00a0considers the interests of justice as slightly higher than\u00a0good cause:<\/p>\n

Good cause and interests-of-justice are closely related\u00a0standards, but the interests-of-justice\u00a0standard is slightly higher than good cause. \u00a0While a good cause standard requires a party to\u00a0show a specific factual reason to justify the needed\u00a0discovery, under the interests-of-justice standard,\u00a0the Board would look at all relevant factors. \u00a0Specifically, to show good cause, a party would be required\u00a0to make a particular and specific demonstration\u00a0of fact. Under the interests-of-justice\u00a0standard, the moving party would also be required\u00a0to show that it was fully diligent in seeking discovery\u00a0and that there is no undue prejudice to the\u00a0non-moving party.<\/p><\/blockquote>\n

The Federal Circuit said that the ercord affords but one reasonable conclusion: Ultratec satisfied both of \u00a7 42.123(b)\u2019s requirements for allowing Ultratec to file a motion to
\nadmit Mr. Occhiogrosso\u2019s trial testimony. First, the evidence could not have been obtained earlier. Ultratec emailed the Board requesting authorization to file a motion to supplement the record the week after the jury trial concluded. This is not evidence that could have been located earlier through a more diligent or exhaustive search; it did not exist during the IPR discovery period.<\/p>\n

The Federal Circuit said that the fact that Ultratec could have, but did not, depose and obtain inconsistent testimony from Mr. Occhiogrosso during the IPR itself is not a basis for concluding otherwise. Ultratec argues that during cross examination at trial in front of the jury Mr. Occhiogrosso offered testimony that is inconsistent with\u00a0his IPR testimony. That inconsistent testimony did not\u00a0exist sooner and thus could not have been proffered to the\u00a0Board sooner.<\/p>\n

The Federal Circuit said that:<\/p>\n

The Board offers no reasoned basis why it would not\u00a0be in the interest of justice to consider sworn inconsistent testimony on the identical issue. Ultratec sought to offer
\nrecent sworn testimony of the same expert addressing the\u00a0same patents, references, and limitations at issue in the\u00a0IPRs. \u00a0A reasonable adjudicator would have wanted to
\nreview this evidence.<\/p><\/blockquote>\n

The Federal Circuit noted that conflicting\u00a0testimony by Mr. Occhiogrosso would be highly\u00a0relevant to both the Board\u2019s analysis of the specific issues\u00a0on which he gave inconsistent testimony and to the\u00a0Board\u2019s overall view of his credibility. His\u00a0testimony was critical to the Board\u2019s fact findings, and under such circumstances, no reasonable fact finder\u00a0would refuse to consider evidence of inconsistent sworn\u00a0testimony. \u00a0The Federal Circuit further noted that admitting and reviewing Mr. Occhiogrosso\u2019s trial testimony would have placed minimal additional burden on the Board.<\/p>\n

A number of problems with the Board\u2019s procedures\u00a0contributed to its errors in this case. First, the Board\u00a0lacked the information necessary to make a reasoned\u00a0decision. \u00a0Second, the Board\u2019s procedures allowed it to make significant\u00a0evidentiary decisions without providing an explanation\u00a0or a reasoned basis for its decisions. \u00a0Third, the Board\u2019s procedures impede meaningful appellate\u00a0review of the agency decision-making.<\/p>\n

The Federal Circuit noted a significant difference between court proceedings and proceedings before the Board:<\/p>\n

In district\u00a0court litigation, a party dissatisfied with a ruling excluding\u00a0evidence is allowed to make an offer of proof to preserve\u00a0error. Fed. R. Evid. 103. Parties in IPRs are not
\ngiven similar protections.<\/p><\/blockquote>\n

The Federal Circuit concluded that the Board abused its discretion when it refused to\u00a0admit and consider Mr. Occhiogrosso\u2019s trial testimony and\u00a0when it refused to explain its decision.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Ultratec, Inc. v. Captioncall, LLC., [2016-1706, 2016-1707, 2016-1708, 2016-1709, 2016-1710, 2016-1712, 2016-1713, 2016-1715, 2016-2366] (August 28, 2017), the Federal Circuit vacated and remanded Board decisions invalidating Ultratec’s patents relating to systems for assisting deaf or hard-of-hearing\u00a0users to make phone … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-1720","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1720","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1720"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1720\/revisions"}],"predecessor-version":[{"id":1733,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1720\/revisions\/1733"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1720"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1720"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1720"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}