Best practices for PTAB success

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

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

Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
A boom in transactional work and a heightened awareness of IP have helped boost revenue for the rebranded commercial services team
Clemens Heusch, head of global litigation and dispute resolution at Nokia, tells us why open conversations – and respectful challenges – lead to the best results
Gift this article