Inventor Testimony Irrelevant

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In International Business Machines Corporation v.Intellectual Ventures II LLC, IPR2014-00180, Paper 22, (July 3, 2014), the Board denied petitioner’s request to file a transcript of the inventor’s testimony as supplemental information.  The Board was unpersuaded by the argument that the inventor testimony is relevant to a claim for which trial has been instituted. The Board said that the general relevancy of an inventor’s testimony regarding the operation of the invention has little relevance to inter partse review proceedings. The possibility that it might be useful in understanding the invention is not significant enough to show that consideration of the information would be in the interests of justice to allow additional testimony on issues already developed by Petitioner on the record.  The Board observed that the request focused on its utility to the panel’s understanding of the technology or assistance in claim construction, a utility that seems generic in nature and untethered to any specific claim for which trial has been instituted.

 

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.