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

Negrão is the executive director of the EUIPO in Alicante
Mrs Justice Joanna Smith identified inconsistencies between evidence given by Stability AI’s CEO and comments he made in the media
The Chongqing First Intermediate People’s Court ruled Oppo must pay for the entire unlicensed period it used the Finnish company’s technology
Firms explain how monitoring, referrals and relationships with foreign firms helped them get more work at the TTAB
Luke Toft explains why he moved back to Fox Rothschild after working in-house at Sleep Number for five months
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
In a seminal ruling, the Beijing Internet Court said images generated by Stable Diffusion counted as original works
Boston-based John Lanza is hoping to work more with life sciences colleagues on the ‘exciting’ application of AI to drug discovery
The Delhi High Court has expressed its willingness to set global licensing terms in the Nokia-Oppo dispute, but it must deal with longstanding problems first
Some patent counsel are still encountering errors even though the USPTO has fully transitioned to the new system