Takeaway: The general relevancy of an inventor’s testimony regarding the operation of the invention has little relevance to the Board’s proceedings.

In its Order, the Board presented its rulings following a conference call held with counsel for the parties on July 2, 2014.  In connection with the conference call, Petitioner had requested authorization for a motion to file additional information under 37 C.F.R. § 42.123(b), and Patent Owner sought to conference with the panel regarding the filing of a motion to amend.

Petitioner had sought to file a transcript of a named inventor because it believed that such testimony would be instructive as to the operation of the invention and as to claim construction, and because such testimony would identify statements inconsistent with positions that the Patent Owner took in its Preliminary Response.  Patent Owner objected to the filing of such testimony because it would have only “remote relevance” to the issues being decided by the Board at this point.  The Board denied Petitioner’s request because it did not believe that the proposed inventor testimony was relevant to a claim for which trial had been instituted.  More particularly, the Board indicated that the possibility that such inventor testimony “might be useful in understanding the invention is not significant enough to show that consideration of the information would be in the interests of justice to allow additional testimony on issues already developed by Petitioner on the record” and that “[n]o argument presented demonstrated a need for the inventor testimony.”  According to the Board, it was premature at this juncture to decide whether the inventor testimony would be allowable in a reply (because Patent Owner had not yet filed its response).

Patent Owner had wanted to confer with the Board regarding its intent to file a contingent motion to amend.  The Board found the conference requirement had been satisfied, and thus authorized the filing of this motion.

The Board also proposed an appropriate mechanism for coordinating efforts by the parties to contact the Board.  The Board ordered that the parties must follow the procedure for contacting the Board outlined in the Order.

International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00180 
Paper 22: Order on Conduct of the Proceedings
Dated: July 3, 2014
Patent 7,634,666 
Before: David C. McKone, James A. Tartal, and Miriam L. Quinn
Written by: Quinn