In Butamax Advanced Biofuels, LLC v. Gevo, Inc., the patent owner requested permission to be excused from the oral hearing. The patent owner cited the expense of having counsel prepare for and attend the hearing. Instead, the patent owner preferred to rest on its written response to the petition. The patent owner did not request that the Board cancel the oral hearing, which had been requested only by the petitioner. Having requested the hearing, the Board held that the petitioner had a statutory right to a hearing. The Board also emphasized that a hearing would be helpful to the Board to answer questions it may have regarding the issues presented in the proceeding.
The Board instead raised the possibility of attendance via telephone. The patent owner declined this option again citing the financial burden of preparing for and participating in the hearing. The Board stressed its expectation that "counsel will attend all proceedings which may materially affect [the patent owner's] interests." However, the Board allowed that at the hearing counsel for patent owner could choose to rest on the submitted briefs and not make oral argument. The Board also offered to allow backup counsel to attend the hearing in place of its lead counsel.
In a subsequent conference call, the patent owner requested permission for its General Counsel to attend the hearing on its behalf in place of the designated counsel. The Board agreed provided that the patent owner meets certain conditions:
The Board will grant this request, if Gevo files a motion for pro hac vice admission of its General Counsel, the Board grants the pro hac vice motion, and Gevo updates its Mandatory Notices to designate its General Counsel as backup counsel in this proceeding. The motion shall be filed in accordance with the requirements set forth in Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7). The Board encourages Gevo to confer with Butamax prior to filing the motion and specify in the motion whether it is unopposed.
This decision illustrates that, if either party requests an oral hearing, the Board will take attendance at the oral hearing seriously and will enforce the parties' statutory right to a hearing. However, mindful of the costs of attending the hearing, the Board appears willing to make concessions such as allowing appearances telephonically, making appearances only to answer the Board's questions, or allowing a party to designate in-house counsel to represent it at the hearing. Butamax Advanced Biofuels, LLC v. Gevo, Inc., Case IPR2013-00539 (PTAB Oct. 10, 2014) (Paper 25) (Crumbley, J.).