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Ultratec, Inc. v. Captioncall, LLC

United States Court of Appeals, Federal Circuit

August 28, 2017

ULTRATEC, INC., Appellant
v.
CAPTIONCALL, LLC, Appellee JOSEPH MATAL, PERFORMING THE FUNCTIONS & DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT & TRADEMARK OFFICE, UNITED STATES, Intervenors ULTRATEC, INC., Appellant
v.
CAPTIONCALL, LLC, Appellee JOSEPH MATAL, PERFORMING THE FUNCTIONS & DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT & TRADEMARK OFFICE, UNITED STATES, Intervenors ULTRATEC, INC., Appellant
v.
CAPTIONCALL, LLC, Appellee JOSEPH MATAL, PERFORMING THE FUNCTIONS & DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT & TRADEMARK OFFICE, UNITED STATES, Intervenors

         Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2013-00540, IPR2013-00541, IPR2013-00544, IPR2013-00545, IPR2013-00542, IPR2013-00543, IPR2013-00550, IPR2013-00549, IPR2014-00780.

          Kristin Graham Noel, Quarles & Brady, LLP, Madison, WI, argued for appellant. Also represented by Anthony Allen Tomaselli, Matthew J. Duchemin, Stephen J. Gardner, Martha Jahn Snyder; Edward King Poor, Chicago, IL; Michael A. Jaskolski, Milwaukee, WI; Nikia L. Gray, Washington, DC; Michael J. Curley, Tucson, AZ.

          Pratik A. Shah, Akin, Gump, Strauss, Hauer & Feld, LLP, Washington, DC, argued for appellee. Also represented by Ze-wen Julius Chen, Rachel J. Elsby; Michael P. Kahn, Caitlin Elizabeth Olwell, New York, NY.

          Farheena Yasmeen Rasheed, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Joseph Matal. Also represented by Nathan K. Kelley, Thomas W. Krause, Jeremiah Helm, Scott Weidenfeller.

          Mark R. Freeman, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, for intervenor United States. Also represented by Sarah Carroll.

          Before Newman, Linn, and Moore, Circuit Judges.

          MOORE, CIRCUIT JUDGE.

         The present appeals arise from a series of inter partes reviews ("IPRs") between Ultratec, Inc. ("Ultratec") and CaptionCall, LLC ("CaptionCall"). Ultratec owns U.S. Patent Nos. 5, 909, 482 ("the '482 patent"), 6, 233, 314 ("the '314 patent"), 6, 594, 346 ("the '346 patent"), 6, 603, 835 ("the '835 patent"), 7, 003, 082 ("the '082 patent"), 7, 319, 740 ("the '740 patent"), 7, 555, 104 ("the '104 patent"), and 8, 213, 578 ("the '578 patent"). The patents disclose and claim systems for assisting deaf or hard-of-hearing users to make phone calls. CaptionCall petitioned for IPR of certain claims of Ultratec's patents. The Patent Trial and Appeal Board ("the Board") held that all challenged claims were either anticipated or would have been obvious in light of a variety of prior art references. Ultratec appealed to our court. The United States Patent and Trademark Office and the Department of Justice (collectively, "the PTO") intervened to defend the Board's decisions. Because the Board failed to consider material evidence and failed to explain its decisions to exclude the evidence, we vacate and remand.

         Background

         Ultratec and CaptionCall are currently litigating in both district court and before the Board. Ultratec sued CaptionCall and its parent company for infringement in the Western District of Wisconsin. The case proceeded to trial, where the jury found the patents valid and infringed and awarded damages of $44.1 million. Five months after the verdict, the Board issued final written decisions holding all challenged claims of Ultratec's patents were either anticipated or would have been obvious. The district court subsequently stayed all post-judgment proceedings pending final resolution of the IPRs.

         CaptionCall retained the same invalidity expert-Mr. Benedict Occhiogrosso-in the district court litigation and the IPRs. In some instances, Mr. Occhiogrosso testified about the same issues and references in both proceedings. Ultratec sought to introduce the trial testimony into the IPRs, alleging that Mr. Occhiogrosso's trial testimony conflicted with written declarations he made in the IPRs.

         Ultratec moved to supplement the record with the inconsistent Occhiogrosso trial testimony. Because Ultratec had not first requested authorization to file the motion with the inconsistent testimony, the Board expunged the motion from the record. PTO Br. at 10 n.8. The Board's regulations require that a party seeking to introduce supplemental evidence more than one month after institution first request authorization to file a motion to submit the evidence. 37 C.F.R. § 42.123(b). As the PTO explained to Ultratec, with regard to its request to file a motion to supplement the record, "[n]o evidence is permitted to be filed, " and the briefing "must not include a discussion of the contents or types of the particular documents sought to be entered." PTO Br. at 10 n.8. On October 30, 2014, within a week of the jury trial, Ultratec requested authorization to file a motion to submit portions of Mr. Occhiogrosso's trial testimony to the Board. Ultratec alleged that Mr. Occhiogrosso's trial testimony addressing a prior art reference was inconsistent with his IPR declarations on that same point.[1] On November 4, 2014, the Board held a conference call to consider Ultratec's request for authorization to file a motion to supplement the IPR record with Mr. Occhiogrosso's trial testimony. The Board did not review the testimony when deciding whether it could be admitted. J.A. 9005; see PTO Br. 10 n.8. It denied Ultratec's request during the call and indicated a written order would follow. The Board never issued any such order. On November 19, 2014, two weeks after the conference call, the Board conducted a short oral hearing on the Ultratec patents.[2]

         The Board issued final written decisions, holding that every challenged claim was either anticipated or would have been obvious. These final written decisions rely heavily on the Board's belief that Mr. Occhiogrosso was a credible witness. See, e.g., J.A. 11, 206 ("It is within our discretion to assign the appropriate weight to the testimony offered by Mr. Occhiogrosso."). The Board cited Mr. Occhiogrosso's testimony over thirty times to support its findings, including at least once for each of the eight patents on appeal.[3] In some instances, the Board explicitly found Mr. Occhiogrosso more credible than Ultratec's expert. See J.A. 23 ("We credit the testimony of Mr. Occhiogrosso over that of Mr. Steel on this issue . . . ."); J.A. 3660 ("Weighing Mr. Occhiogrosso's testimony against Mr. Ludwick's testimony, we credit Mr. Occhiogrosso's testimony . . . ."); J.A. 7403 ("On this point, based on our review of McLaughlin, we credit the testimony of Petitioner's declarant, Mr. Occhiogrosso, over that of Patent Owner's declarant, Mr. Ludwick."). In other instances, the Board found Mr. Occhiogrosso credible on the very issue Ultratec alleges he contradicted at trial. See J.A. 6383 ("We are persuaded by Mr. Occhiogrosso's testimony that a person of ordinary skill in the art would consider McLaughlin to be disclosing a device capable of all of the HCO/VCO features described therein."); see also J.A. 23, 27, 7403.

         Ultratec moved for reconsideration on a variety of grounds, including that the Board failed to consider Mr. Occhiogrosso's trial testimony and failed to explain its decision to exclude the new evidence. See J.A. ...


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