It is well established that new arguments cannot be presented at an oral hearing before the PTAB. 35 U.S.C. §§ 316(a) and 326(a); 37 C.F.R. § 42.70(a); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 (explaining that “nothing new can be presented [at an oral hearing], no new evidence, no new arguments” because “[u]nlike trials conducted in district courts, a trial before the board is conducted on paper.”). Despite this hardline rule, the patent owner attempted to present a “new approach” at an oral hearing on July 21, 2015. The PTAB immediately noted that the patent owner’s new arguments were inappropriate. However, the board permitted the patent owner to restart its oral argument, and allowed it to use the entirety of the originally scheduled argument time to present an argument that did not include the new material.
A week later, the petitioner requested permission to file a motion for a new oral argument by pointing to the patent owner’s improper conduct at the first hearing. The board, however, noted that the patent owner was effectively thwarted from presenting new arguments at the hearing because its counsel was “instructed … to not ‘take a new approach’” when it restarted its oral argument. Because the issue was effectively decided at the first hearing, the board refused to allow the petitioner to file a motion for a second oral argument.
Samsung Electronics Co. Ltd., v. Rembrandt Wireless Tech., LP, IPR2014-00892, Paper 44 (July 29, 2015).