The Software IP Report

USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

By George Schooff

Categories: The Software IP Report, USPTO Post-Issue Proceedings

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters.

A few observations:

  • The Petitioner, Securus Technologies, Inc., and the Patent Owner, Global Tel*Link Corporation, were well represented by counsel. Those in attendance appeared split on the likely outcome.
  • The Detroit Office, like the other regional Patent Offices, has only a single Hearing Room.
  • The Hearing Room includes a bench that can accommodate three Administrative Patent Judges, two counsel tables, a lectern, a monitor for Judges appearing remotely, and space for a court reporter.
  • The Hearing Room is tight quarters. The maximum number of publicly available spaces is perhaps 10. There is an overflow room that can accommodate additional members of the public, but they must watch the hearing via monitor.
  • Administrative Patent Judge Beverly Bunting was on the bench live, while Judges Patrick Boucher and Kevin Turner appeared remotely. The Judges were active in questioning counsel. All appeared well familiar with the issues.
  • Dr. Christal Sheppard, the Director of the Detroit Office, attended the hearings. As always, Dr. Sheppard was gracious, answered questions, and sought input on how the Hearing Room could be re-arranged to better accommodate future hearings.
  • The first order of business should be to adjust the placement of the monitor for the Judges appearing remotely so that counsel (and those in attendance) can better see and interact with them.

All in all, it was an exciting day at the Detroit Patent Office. The new dawn of challenging issued patents through post-grant Patent Office proceedings rather than the federal courts continues unabated as accused infringers realize the benefits of different rules of claim construction, and the lower standard of proof to invalidate patents.

We at Bejin Bieneman PLC share the same office building with the Detroit Patent Office. We were the first intellectual property law firm to move to Detroit in concert with the Detroit Patent Office’s opening. We are excited for another first at the Detroit Patent Office, and look forward to working with accused infringers and Patent Owners at the Detroit Patent Office in proceedings before the Patent Trial and Appeal Board.