Ultratec, Inc. v. Captioncall, LLC, 872 F.3d 1267

Background

Ultratec owns multiple patents for telephone-assist systems for deaf or hard-of-hearing users; CaptionCall petitioned for inter partes review (IPR) challenging claims of those patents.
CaptionCall’s invalidity expert, Benedict Occhiogrosso, gave written declarations in the IPRs and later testified at trial in district court; Ultratec alleged that his trial testimony conflicted with his IPR declarations.
Ultratec sought authorization to file a late motion to supplement the IPR record with portions of Occhiogrosso’s trial testimony; the Board denied Ultratec’s request in a conference call but never issued a written order explaining the denial and did not review the testimony.
The Board’s final written decisions credited Occhiogrosso’s testimony extensively and held the challenged claims anticipated or obvious; Ultratec moved for rehearing, arguing the Board excluded and failed to explain exclusion of the trial testimony.
The Federal Circuit held the Board abused its discretion by refusing to consider the inconsistent trial testimony and by failing to provide a reasoned explanation for denying authorization to file the supplement; because the Board relied heavily on Occhiogrosso’s credibility, the court vacated and remanded all decisions and directed the Board to admit and consider the trial testimony on remand.

Issues

Issue	Ultratec’s Argument	CaptionCall/PTO Argument	Held
Whether the Board abused its discretion by denying authorization to file a late motion to supplement the record with Occhiogrosso’s trial testimony	Ultratec: testimony arose after IPR discovery and could not have been submitted earlier; Board should have authorized supplementation	CaptionCall/PTO: Ultratec should have memorialized the conference call; late evidence is inappropriate so close to hearing	Held: Board abused its discretion; testimony was new, probative, and minimally burdensome so §42.123(b) factors supported admission
Whether the Board was required to review the proffered evidence when deciding authorization	Ultratec: Board needed to see the testimony to make a reasoned decision	PTO: procedural rules bar submitting the evidence with the authorization request; characterization during call sufficed	Held: Board erred by denying without reviewing evidence and without reasoned explanation; it lacked the facts needed to decide
Whether the Board’s failure to explain its denial violated APA reviewability and warranted vacatur	Ultratec: lack of written reasoning prevents meaningful appellate review	PTO/CaptionCall: conference calls are typical; patentee could have preserved call record	Held: APA requires reasoned explanation for substantive evidentiary rulings; absence of explanation made decision unreviewable and was unlawful
Whether the Board’s reliance on Occhiogrosso’s credibility required vacatur if the excluded trial testimony might show inconsistency	Ultratec: credibility central to Board’s findings; inconsistent sworn trial testimony could alter outcomes	PTO/CaptionCall: trial testimony is part of district court record and could be judicially noticed	Held: Because the Board repeatedly credited Occhiogrosso, its failure to consider potentially inconsistent sworn testimony tainted decisions; vacatur and remand required.

Key Cases Cited

Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2015) (standard for reviewing Board management of trial proceedings)
Abrutyn v. Giovanniello, 15 F.3d 1048 (Fed. Cir. 1994) (standards for abuse of discretion)
Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29 (1983) (agency must provide reasoned explanation)
Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co., 856 F.3d 1019 (Fed. Cir. 2017) (agency must present a full and reasoned explanation)
In re Lee, 277 F.3d 1338 (Fed. Cir. 2002) (requirement for reasoned agency explanation)
SEC v. Chenery Corp., 318 U.S. 80 (1943) (administrative action review limited to agency’s stated grounds)
SEC v. Chenery Corp., 332 U.S. 194 (1947) (court may not supply a rationale the agency did not provide)
In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (vacatur/remand where agency explanation is inadequate)