Butamax Advanced Biofuels LLC v. Gevo, Inc.

Addressing a patent owner’s request in an inter partes review (IPR) to be excused from attending the oral hearing in view of the financial burden involved in counsel preparation and attendance, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) indicated its expectation that the patent owner’s counsel attend all proceedings that may materially affect the patent owner’s interests, but allowed the patent owner’s general counsel to attend the oral hearing in place of the designated counsel.  Butamax Advanced Biofuels LLC v. Gevo, Inc., Case No. IPR2013-00539 (PTAB, Oct. 10, 2014) (Crumbley, APJ).

Following a timely request from the petitioner, the PTAB set a date for the oral hearing.  Although the patent owner did not file a request for oral hearing, it did not oppose the petitioner’s request.  Later, Gevo informed the PTAB that it would like to rely on its previously filed response to the petition and not attend the oral hearing because it did not want to undertake the financial burden involved in counsel preparing for and attending the oral hearing.  Gevo did not request cancellation of the hearing or oppose Butamax’s appearance at the hearing.

Citing Butamax’s statutory right to a hearing under 35 U.S.C. § 316(a)(10) and the panel’s position that oral hearing would assist the PTAB in deciding the issues in the case, the PTAB decided that an oral hearing should be held in the case, but that Gevo’s counsel could attend telephonically.  When Gevo informed the PTAB that holding the oral hearing telephonically was insufficient to address Gevo’s financial considerations, the PTAB emphasized the importance of Gevo’s counsel being present at the hearing to answer any questions the PTAB may have or to respond to any arguments made by Butamax.  The PTAB advised Gevo that it could inform the PTAB of its wish to rest on its briefs and not make an oral argument at an appropriate time during the oral hearing.

The PTAB also suggested that Gevo could name additional back-up counsel and request permission for the back-up counsel to attend the hearing in place of its currently designated counsel. Gevo then requested permission to allow its general counsel to replace the current counsel for the oral hearing.  The PTAB agreed, provided that Gevo filed a motion for pro hac vice admission of its general counsel and updated its mandatory notices to designate its general counsel as back-up counsel in this proceeding.