The U.S. Patent and Trademark Office (USPTO) released the transcript from the first-ever oral hearing conducted before the Patent Trials and Appeals Board (PTAB) in an America Invents Act post-grant proceeding. The hearing, which was conducted just last week, involved a patent that was challenged using the transitional program for covered business method patents (TPCBM). It is between SAP America Inc. and Versata Development Group Inc. and is styled as case number CBM2012-00001 at the PTAB. The patent is also involved in co-pending litigation, namely Versata Software Inc. et al. v. SAP America Inc. et al., case number 2:07-cv-00153 in the U.S. District Court for the Eastern District of Texas, and case number 12-1029 in the U.S. Court of Appeals for the Federal Circuit.
The hearing was two hours long, with much of the time used by counselors who addressed questions offered by judges during the allotted time. Indeed, as would be expected, the judges tested counsel for petitioner with questions about his contention that the challenged patent was merely an unpatentable abstract idea, and they correspondingly tested counsel for patentee with questions about his position that the challenged patent covers an improvement over existing computer technology.
As stipulated by the rules governing these proceedings, the hearing was limited to attorney argument and response and did not feature witnesses or other trial-like features. In this sense, the format was less like a District Court litigation trial and more akin to the format of a conventional oral argument before the USPTO.
Much like conventional oral hearings held at the USPTO, many of the questions were focused on the details. We also note that the panel members focused their attention on issues raised in the pre-hearing briefs. We expect more of the same on each of these points, based on our experience in such proceedings, and caution that judges at the USPTO generally focus on the nuts and bolts of arguments presented in pre-hearing briefing and precise claim language, as compared with their District Court counterparts.
As is apparent from the transcript, of the three judges on the panel, Judge Tierney asked nearly all the questions. This, too, is consistent with historic practice before the PTAB, as one judge on the panel is assigned at the outset to write the opinion and usually takes the lead in questioning the parties.
The USPTO has not yet held a hearing on any of the cases involving the other new America Invents Act program, known as inter partes review.
Click here to view the full transcript.