Best practices for PTAB success
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

Breton is commissioner for the internal market in the EU at the European Commission
Kupecz is a judge at the UPC Central Division in Germany
Hakki is senior partner at Shearman & Sterling in the US and Dejonghe is senior partner at Allen & Overy in London
Jaramillo is health minister for the Colombian government
Birss is a judge at the England and Wales Court of Appeal in London
Ragot is general counsel at Christian Louboutin in France
Meikle is the chief executive at the Commerce Commission in New Zealand
Mishra is chairman at The Bar Council of India
Musk is the founder of X Corp in the US
McCallum is head of litigation and IP at CoStar in the US