Intri-Plex Technologies Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.

The U. S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) provided further guidance as to what new matter may properly be raised during oral argument, explaining that parties may not present new arguments unless invited to do so by the Board. With respect to new legal authority however, the Board stated that the parties may submit a short statement of such authorities no later than one seek before the Oral Hearing. Intri-Plex Technologies Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309 (PTAB, Dec. 18, 2014) (Capp, APJ).

The patent owner, Saint-Gobain Performance Plastics Rencol, and the petitioner, Intri-Plex Technologies, sought guidance from the PTAB during a teleconference as to whether the patent owner could reserve a portion of its oral argument and comment on the proper scope of the petitioner’s reply after the petitioner presented its oral argument.  In an order concerning Conduct of the Proceedings (37 C.F.R. § 42.5), the Board instructed that the patent owner may address the proper scope of petitioner’s reply, but only during the patent owner’s oral argument presentation.  Further, the Board made clear that the patent owner, in addressing the petitioner’s reply, may not respond to the argument in the petitioner’s reply unless invited to do so by Board.

The parties also sought clarification from the Board as to whether they were permitted to submit a short statement regarding new case law in advance of the oral hearing.  The patent owner requested permission to submit a statement of new legal authority regarding the status of alleged prior art presented by the petitioner. The Board agreed that the parties may, in advance of the oral hearing, each submit a short statement in the form of a notice of new legal authority that was not available when the parties filed their respective papers.  However, the Board instructed that the notice may not contain any argument or commentary concerning the new legal authority, only citation of the particular page(s) the party wishes to bring to the Board’s attention.

In limiting the introduction of new argument and new legal authority at the oral hearing, the PTAB reasoned that trials before the Board are conducted on the papers.  New arguments and legal authority not presented in the parties’ papers therefore are not properly presented in the record.