Inadequacy of PTAB's Procedures for Reviewing Late-Submitted Evidence Leads to Vacatur

By: Robert Courtney

Ultratec, Inc. v. CaptionCall, LLC, __ F.3d __ (Fed. Cir. Aug. 28, 2017) (Newman, Linn, MOORE) (PTAB) (4 of 5 stars)

Fed Cir vacates IPR determination of obviousness/anticipation. The PTAB abused its discretion by denying Ultratec's request to supplement the record with trial testimony by CaptionCall's expert, made during co-pending litigation, that were inconsistent with statements the expert had made during the IPR. The opinion discusses how admission/review of the expert's statements would have imposed little burden on the PTAB, and discusses how the PTAB's procedures for requesting supplementation of the record have the effect of denying the Board any opportunity to actually know the content of the requested supplementation before ruling on the motion. "In this case, the Board denied a request to admit evidence without ever seeing the evidence it was denying; it never reviewed [the expert's] testimony because Ultratec was not allowed to submit that evidence with its request to file a motion to supplement the record. The Board's only exposure to the disputed testimony was the parties' competing characterizations of it during the conference call of which there exists no record." Op. at 12. The Board also failed to provide a reasoned basis for its denial, and its procedures on this issue "impede meaningful appellate review of the agency decision-making." Id. at 13. The opinion rejects CaptionCall and the PTO's argument that Ultratec bore responsibility to bring a stenographer to the conference call at issue, as the rules impose no such burden. It is the PTO's responsibility to provide a satisfactory explanation for its action.