Best practices for PTAB success

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Best practices for PTAB success

Terry Stanek Rea of Crowell & Moring had some helpful tips for dealing with the Patent Trial and Appeal Board for preliminary responses, amendments, discovery, deposition evidence, objections to evidence and hearings



Speaking at the AIPLA Annual Meeting, Rea noted the high percentage of patent owners providing preliminary responses to petitions. “Best practice in most cases is to file a preliminary response because if you can stop the trial there, you can run back to the judge and say, ‘They couldn’t even get past the institution!’ It is gold plating the patent.”

The successful substantive arguments she has seen include claim constructions that permit petitioners to address fundamental gaps in the prior showing without requiring counter expert testimony.

Talking about depositions, Rea warned against advising your client not to answer. “If there is any disagreement between the parties you are supposed to call Ghostbusters!” she said, referring to the Board. “You are supposed to call PTAB right then and there at the deposition and say there has been a disagreement.”

In hearings, Rea warned that PTAB judges are extraordinarily prepared with probing questions. She said it is important to answer the questions asked, and to the required level of detail. Judges will keep asking the question until they get an answer, she said. “You are dealing with very sophisticated judges that probably know the record as well as you are supposed to.”

Presenters collectively need to be prepared on all issues, but there is no shame in a speaker deferring to a colleague. Rea said to be prepared to make multiple responses to the tough issues in your case, and be prepared for hypotheticals.

Rea said to consider using multiple presenters. “Nobody can know the record absolutely perfectly,” she said. “So have some of your colleagues with you and they can assist with answering some of the questions if they are outside your scope. I wouldn’t be embarrassed, the PTAB is there to pull out the best information possible.”

She added: “I think of it as being more like a Federal Circuit hearing than anything in a district court. Your job is to actually answer the question, give the judges what they want and hopefully persuade them that your side wins.”



more from across site and SHARED ros bottom lb

More from across our site

IP is becoming one of the most significant drivers of major deals, and law firms are altering their practices to reflect the change
In the second in a new podcast series celebrating the tenth anniversary of IP Inclusive, we discuss IPause, a network set up to support those experiencing (peri)menopause
Firms are adapting litigation strategy as Brazil’s unique legal system and technical expertise have made preliminary injunctions a key tool in global patent disputes
A ruling on confidentiality by the the England and Wales Court of Appeal and an intervention from the US government in the InterDigital v Disney litigation were also among top talking points
Moore & Van Allen hires former Teva counsel Larry Rickles to help expand the firm’s life sciences capabilities
Canadian law firms should avoid ‘tunnel vision’ as exclusive survey reveals client dissatisfaction with risk management advice and value-added services
In major recent developments, the CoA ruled on director liability for patent infringement, and Nokia targeted Paramount at the UPC and in Germany
Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Gift this article