PTAB Is Unimpressed by Over-Lawyering – Medtronic, Inc. v. Norred

Addressing a patent owner’s objections to demonstrative exhibits, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB) overruled the objection of the patent owner’s representative and encouraged the parties to resolve additional disputes prior to the hearing.  Medtronic, Inc. v. Norred, Case Nos. IPR2014-00110, -00111, and -00395 (PTAB, Jan. 23, 2015) (Weatherly, APJ).

The patent at issue relates generally to an aortic heart valve that can be placed inside a patient without the need for open heart surgery. The petitioner filed two petitions for inter partes review (IPR) of the patent, asserting that several of the patented claims were invalid as anticipated and/or obvious.

The dispute between the parties centered on the petitioner’s demonstrative exhibits.  The patent owner raised objections to 73 out of 106 demonstrative exhibits and provided a summary of its objections only moments before a conference call with the PTAB.  In an effort to streamline the conference call, the PTAB asked the patent owner to present its “single best objection from among the 73 presented.”  The patent owner argued that the title of one slide was a mischaracterization of the testimony provided below the title.  The PTAB overruled the patent owner’s representative objection and noted that the panel would give no evidentiary weight to argumentative characterizations of evidence such as those that appear in the title of any slide.

The PTAB refused to hear any further argument during the conference call related to the patent owner’s remaining objections and instructed the parties to resolve the remaining objections between themselves in advance of their scheduled hearing. The PTAB further stated that the patent owner would be permitted, at the outset of the hearing, to raise any remaining objections; however, the time spent resolving any remaining objections would be charged to the patent owner.

The PTAB also reminded the parties that arguments at the oral hearing would be limited to those arguments raised in a paper, as well as that the hearing would be an improper venue for introducing new arguments or evidence.