November 19, 2015

Get It in Writing: Even Arguments Prompted by PTAB Questions Must Be in the Briefings

The Patent Trial and Appeal Board (PTAB) continues to strictly enforce its rule that "parties are not permitted to raise new arguments at oral hearing," including in situations where the "new" arguments are provided as a direct answer to a question from the PTAB.

In Information Sports Technologies v. Pillar Vision, Inc., the PTAB held that the challenged claims of U.S. Patent No. 8,622,832 (the ‘832 patent) are obvious over the prior art, including U.S. Patent No. 6,148,271 (Marinelli). The ’832 patent relates to "a trajectory detection and feedback system, useful to evaluate trajectory parameters of a basketball shot at a basketball hoop," and the challenged claims recite systems that determine information about the "angle" of basketball shots relative to the basketball hoop (also called the "entry angle") or the "velocity of the basketball" near the basketball hoop (also called the "entry velocity"). The primary prior art reference, Marinelli, "is directed to an accelerometer network embedded into movable sporting objects to measure motion characteristics that are reported back to a user."

In determining that the challenged claims of the ’832 patent are obvious, the PTAB rejected several arguments raised by the patent owner, including an argument raised at the oral hearing that "a person could not use the system of Marinelli to determine entry angle or velocity." At the hearing, the patent owner asserted that "the only thing that Marinelli actually measures is spin," which according to the patent owner "doesn’t result in a useful measurement of entry angle" even when combined with the other prior art references. In response, the PTAB asked whether there was "any dispute that a person of ordinary skill in the art could utilize Marinelli's accelerometer system to determine those variables [i.e., entry angle or entry velocity]?"

To that specific question, the patent owner answered: "So I don't believe that a person could use the system in Marinelli to determine entry angle or velocity. I don't think the Marinelli system is capable of doing that…," thereby raising the argument that Marinelli does not provide an enabling disclosure. But because the patent owner had not presented that argument in its papers, the PTAB ruled that the argument was waived: "Although we recognize that this discussion may have resulted from questioning by the judges, we fail to see where Patent Owner’s papers present an argument concerning whether Marinelli provided an enabling disclosure." The PTAB further stated that "Patent Owner’s counsel’s stated belief at the hearing is not a substitute for evidence and does not rebut the evidence of Marinelli’s enabling disclosure as discussed in the paragraph immediately above." Thus, even though the patent owner presented its position in a direct answer to a question from the PTAB, that argument was doomed because the patent owner had not previously articulated that interpretation of the prior art and provided no evidence on that point.

The takeaway from Information Sports? Parties should take care that arguments presented at the oral hearing are fully addressed in the papers, whether those arguments are part of the primary position or are presented in response to specific questions from the PTAB. Parties should also ensure that the briefings provide a basis for arguments they plan to make and for arguments they may need to present.

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