With strict page limits in AIA post-grant proceedings making it difficult for parties to fully explain their arguments, parties are often required to economize their words. Now, a recent PTAB order makes the ability to flesh out an argument on the papers an even greater challenge, as the PTAB defined a "new argument" as any contention, explanation, or characterization the parties had not already raised on the papers. Under this aggressive interpretation of "new argument," it is important for petitioners and patent owners to develop their oral argument strategies early on in the process to ensure they present all of their arguments up front.
Under the AIA, new arguments cannot be presented at an oral hearing. 35 U.S.C. §§ 316(a) and 326(a); 37 C.F.R. § 42.70(a). Instead, oral argument is limited to issues "raised in a paper," and "[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." Trial Practice Guidelines, Vol. 77, No. 157, 48768 (Aug. 14, 2012). To ensure that demonstrative exhibits comply with the statute and rules, the exhibits must be exchanged at least five days before the hearing and filed with the Board no later than the time of the hearing. Id. at § 42.70(b).
In CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118, the PTAB drew a hard line on limiting oral advocacy to issues in the papers, explaining that by the time of the oral hearing, "nothing new can be presented, no new evidence, no new arguments" because "[u]nlike trials conducted in district courts, a trial before the Board is conducted on paper." Specifically, the PTAB explained that "[w]hatever a party desires to present, for whatever reason, should have already been presented in the party's petition, response, opposition, motion, reply, declarations, observations on cross-examination, or other exhibits presented at an appropriate time during the trial." The PTAB explained that new arguments would include "different characterizations of the evidence and different inferences drawn from the evidence." Additionally, if a party failed to previously develop or explain certain testimony, "it may not be developed, discussed, explained, or summarized, for the first time, in the form of demonstratives slides at the final oral hearing." That is, a party cannot use the final oral hearing to expand upon an argument or its reliance on declaration testimony in a way that has not been previously presented. As an illustration of what arguments are acceptable at an oral hearing, the PTAB explained that if a party argued that an object was red in its brief, it could not argue at the oral hearing that the object was green or pink. Demonstrating the rigidity of its position, the PTAB also explained that if a party previously argued that an object was red in its brief, it could not argue at oral hearing that "red" covers a range of spectra, unless that contention was previously made.
Extending its position on new arguments, the PTAB clarified what a party may include in its demonstrative slides. The PTAB stated that "figures, charts and diagrams may serve as visual aids" but "written text, setting forth various statements, characterizations, and assertions go beyond serving as visual aids, as they constitute additional briefings themselves." The burden of establishing that a demonstrative does not include new argument falls on the party presenting the demonstrative. The PTAB noted that it should not be overly cumbersome to determine if something is new and a "party should be able to point specifically to a sentence or two, or even a paragraph, in an appropriate paper to support a demonstrative slide."
As the oral hearing is ultimately limited by the arguments and testimony provided in the papers, petitioners and patent owners should begin developing a strategy for oral argument early in the proceedings, and be mindful to include any arguments that they may want to present at the oral argument in a paper to PTAB.
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