Shaw Industries v. Automated Creel (IPR2013-00132, Paper 36): A Combined Oral Hearing Order

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. involved two inter partes reviews of the same patent, IPR2013-00132 and IPR2013-00584. Paper 36, entered April 10, 2014, is a routine trial hearing order. It is a useful example of how the Board organizes oral argument, and the case itself later produced an important Federal Circuit decision on estoppel.

Background

Under 35 U.S.C. § 316(a)(10), a party to an IPR has the right to an oral hearing, and 37 C.F.R. § 42.70(a) provides for a party to request one. Both parties did so in each proceeding. The two cases involved the same patent and similar prior art: the first concerned claims 1–3 and 5–21, and the second concerned claim 4.

What the Board decided

The Board granted the requests and set a single combined hearing for both cases. Its order included the following:

• Time and order. Each side had sixty minutes in total for both proceedings. Because the petitioner bears the ultimate burden of proving unpatentability, it would argue first and could reserve rebuttal time; the patent owner would then respond.
• Public hearing and transcript. The hearing was open to the public, and the court reporter’s transcript would be the official record.
• Demonstratives. Under § 42.70(b) as then in force, demonstrative exhibits had to be served five business days before the hearing. The order also required filing two business days before and a conference call to resolve disputes, and pointed the parties to an earlier Board order in CBS Interactive v. Helferich on the proper content of demonstratives.
• Lead counsel. Lead counsel were expected to attend, though backup counsel could present.

Why it matters

Hearing orders of this kind show the structure of a PTAB oral argument: short, time-limited, with the petitioner going first and demonstratives limited to what is already in the record. Combining hearings for related proceedings is a common efficiency. Specific deadlines and logistics, including whether hearings are held in person or remotely, have changed over time, so readers should check the current rules and the scheduling and hearing orders in their own case.

Later developments

In Shaw Industries Group v. Automated Creel Systems (Fed. Cir. 2016), the court read IPR estoppel under 35 U.S.C. § 315(e) narrowly for grounds the Board had declined to institute, reasoning that such grounds were not raised, and could not reasonably have been raised, “during” the review. That view was later overtaken. In SAS Institute Inc. v. Iancu (2018), the Supreme Court held that the Board must decide all challenged claims if it institutes, ending partial institution; see PTAB guidance after SAS. In California Institute of Technology v. Broadcom (Fed. Cir. 2022), the court held that estoppel extends to grounds the petitioner reasonably could have included in its petition. See estoppel arising from PTAB trials.

Key takeaways

• The Board granted both parties’ hearing requests and combined the hearings for two related IPRs.
• The petitioner argued first because it bears the burden of proving unpatentability.
• The order set deadlines for serving and filing demonstratives and resolving disputes about them.
• The Federal Circuit’s 2016 Shaw estoppel ruling has been overtaken by SAS and Caltech v. Broadcom.