PTAB Abused Discretion In Refusal To Consider Late-Breaking Evidence

The US Court of Appeals for the Federal Circuit rejected the manner in which the Patent Trial and Appeal Board (PTAB or Board) used a procedure for considering new evidence arising late in an inter partes review (IPR) trial. Ultratec, Inc. v. CaptionCall, LLC, Case Nos. 2016-1706; -1707; -1710; -1712; -1708; -1709; -1715; -1713; -2366 (Fed. Cir., Aug. 28, 2017) (Moore, J). In a set of nine IPRs where the PTAB found the challenged claims in seven patents anticipated and/or obvious, the Federal Circuit vacated all nine decisions because the PTAB failed to consider "material evidence" and failed to "explain its decision to exclude the evidence." 

In this set of IPRs, the US Patent and Trademark Office proceedings were conducted parallel to the co-pending district court litigation. The petitioner's testifying expert in district court also submitted declarations in support of petitioner's IPRs. The trial in district court occurred first, where cross-examination of the