DePuy Synthes Prods., Inc. v. Medidea, L.L.C.

When a party asks to have a person who submitted no declaration evidence and is not counsel of record (here, the inventor) address the panel at oral hearing, the Board will deny the request because that person's testimony would be new evidence, which the Trial Practice Guide forbids at oral argument. The Board relied on the Guide's statement that "No new evidence or arguments may be presented at the oral argument." No prior precedent directly addressed this issue in the text; the Board relied only on the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Petitioners can oppose live testimony at oral hearing from any witness who has not given declaration evidence, because it would be new evidence. Patent owners cannot use oral hearing to put the inventor or another non-declarant witness before the panel, so they must present such testimony through declarations in the paper record. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: The Board applied the Trial Practice Guide rule: a party may rely on evidence previously submitted and may present only arguments in the papers already submitted, and no new evidence or arguments may be presented at oral argument. Testimony from someone who gave no declaration is new evidence. TRIGGERING FACTS: Patent Owner asked, by e-mail on January 17, 2019 and then on a January 23, 2019 conference call, to let the inventor, Dr. Michael Masini, address the panel at oral hearing. He submitted no declaration evidence in the proceeding and was not counsel of record. The request was denied. KEY QUOTE: "Accordingly, any testimony that Dr. Masini provides at the oral hearing would be new evidence and forbidden under our Trial Practice Guide." (Paper 29, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). PRACTICE TIP: Put any inventor or witness testimony into the record through a declaration during the briefing stages. Do not ask to have a non-declarant, non-counsel witness speak at oral hearing, and oppose such a request from the other side.