8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248 USA

Telephone: +1-703-205-8000

First AIA Review Hearing Held at USPTO

By Charles Gorenstein

The first-ever hearing in an America Invents Act (AIA) post-grant proceeding took place on Wednesday, April 17, 2013. Observers report that the hearing was conducted much in the traditional way of oral arguments to the USPTO Board and not much like a typical trial in a district court.The hearing occupied two-hours during which time the judges on the Patent Trial and Appeal Board (PTAB) questioned counsel for patent challenger, SAP America Inc., about its basis for asserting that the challenged patent for a way of organizing pricing data is an unpatentable abstract idea.   The attorney for patent owner, Versata Software Inc., was in turn questioned on his position that the patent covers an improvement over existing computer technology.

Although such a proceeding under AIA is formally known as a trial, the hearing did not include any witnesses or other trial-like attributes. Rather, as indicated above, this hearing more closely resembled other USPTO administrative hearings.

The dispute concerning the Versata patent turned entirely on a single question of law, whether the patent covered an abstract idea.  Such issue is appropriate for attorney argument.   Still, a former USPTO administrative patent judge who was in attendance at the hearing expressed a belief that the Versata hearing should be typical of future proceedings, and testimony concerning factual issues will most likely be in the form of presentation of deposition transcripts, rather than live witnesses.  This is in keeping with traditional USPTO practice involving inter partes procedures such as patent interferences.

The hearing at the USPTO, very much like traditional hearings in the Office, focused largely on technical questions relating to the subject matter at hand.  This is typical of how matters are addressed by the technically-savvy Administrative Patent Judges of the PTAB and unlike what predominates a trial in district court where matters are presented to a judge and jury generally not well-versed in the relevant technology.  This emphasizes the importance of retaining counsel for representation in the new AIA proceedings who are both qualified in the technology and highly experienced in the ways and procedures of the USPTO.

The matter discussed above is a challenge to a patent proceeding under a program implemented by the AIA for challenging certain business method patents. The USPTO has not yet held any hearing in any inter partes review, another new proceeding under the AIA.