Scott Daniels | December 19, 2012
Once all the briefs have been filed, the Patent Owner has the option of requesting oral argument (with inter partes reexaminations, both the Patent Owner and the Requester have that option). So, should the Patent Owner ask for oral argument? Rule 41.73(a) reflects at least some ambivalence on the part of the Board:
An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.
Thus, there should be some objective basis for believing that resolution of the issues on appeal would be facilitated by oral argument. Certainly, the Patent Owner should not ask for oral argument, only to repeat the arguments in its brief.
Although our advice is normally to seek oral argument, there is another reason for not doing so: the possibility that the Board will ask questions of the Patent Owner’s lawyer at the argument and elicit from him or her an admission that the Board will later use against the Patent Owner in the final decision.
On Tuesday, for instance, the Board cited such an admission in its decision in Nintendo v. Motiva, 95/001,470. The determinative question was whether one skilled in the art would construe a limitation in the claim broadly enough to encompass a component disclosed in the prior art. The Board found that the claims were anticipated by the prior because one skilled in the art would interpret those claims broadly to cover the prior art device. The Board based its decision, in part, on statements made at the oral argument: “at oral argument, [the Patent Owner] expressed, thought its representative, that it was also of the view that, outside the context of the [patent], one with ordinary skill in the art would have appreciated that the [prior art] headset provides for user input and thus generally constitutes [the claimed] user input device.”
Before seeking oral argument, the Patent Owner must candidly consider whether there is any point on which a compromising admission could be coaxed from its lawyer. If so, it might be better to be quiet.
Finally, a Patent Owner in inter partes reexamination should be aware that the Requester also may ask for oral argument. By not filing a request, there is the risk that the opposing party will and be the only party allowed to speak at the argument:
No appellant or respondent will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in § 41.20(b)(3).