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.
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.
R. Freeman, Appellate Staff, Civil Division, United States
Department of Justice, Washington, DC, for intervenor United
States. Also represented by Sarah Carroll.
Newman, Linn, and Moore, Circuit Judges.
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
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
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.
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. 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
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. 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,
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. ...