Five Things to Know For Patent Trial and Appeal Board Arguments

Jan. 2, 2020, 3:58 PM

Hearings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board can be make-or-break moments in administrative challenges.

Litigants in patent challenges under the America Invents Act, including inter partes reviews, may request an oral hearing at the PTAB, where each side has an opportunity to argue issues and answer questions from a three-judge panel.

PTAB hearings can be hybrids of arguments at the U.S. Court of Appeals for the Federal Circuit, an interview with a PTO patent examiner, and a district court hearing on the meaning of patent claims, according to Banner & Witcoff Ltd. attorney Frederic Meeker, who has served as lead counsel in over 100 inter partes reviews.

Here are five things to know about arguing before a PTAB panel:

1. Listen To Questions

Attorneys often come to oral hearings with presentations on the important parts of a case. They can sometimes view judges’ questions as annoying diversions, said James Carmichael, a former administrative patent judge at the agency.

Carmichael warned against brushing off questions from the panel, saying judges aren’t making queries for fun or to give attorneys a hard time. Judges come to the hearing knowing what they think are the main issues and frame their questions accordingly, he said.

“Almost always the questions are a beautiful pathway to exactly what is going to stand in the way of you winning or not,” Carmichael said.

Carmichael, who founded Carmichael IP PLLC and now represents inventors and patent challengers at the PTAB, said an active bench is more valuable than a silent one. Attorneys need to listen to the questions and give a thoughtful response, he said.

“The most valuable thing that’s happening at these oral hearings is you’re getting input from the judges and what they think is important,” Carmichael said.

2. Know The Technology

Every PTAB judge has a technical background, as well as a law degree. Attorneys arguing before the board must have a thorough understanding of the technology involved in a patent and a strong grasp of the case record.

The judges “on your panel will know the patents and prior art as well as any lawyer in the courtroom,” said Meeker, who primarily handles cases in cable, satellite and related industries. “They’ll know the law and they’ll also know PTAB practice.”

The PTAB typically allows each side an hour of argument - four times as long as litigants are given in a normal Federal Circuit appeal. That means that attorneys have to field a greater number of detailed questions, and have more chances of making a verbal misstep.

The best-case scenario for attorneys who say something ill-informed is that they aggravate the judges and lose credibility, Carmichael said.

“The worst-case scenario is that you accidentally say something that hurts your case, which actually happens very often,” he said.

3. Consider Live Testimony

Live testimony from witnesses has been rare during PTAB oral hearings, occuring only a handful of times over the course of thousands of reviews. But attorneys shouldn’t write it off, Trenton Ward, another former PTAB judge, said.

Ward was part of a panel in 2014 that allowed the inventor of the challenged patent in K-40 Electronics LLC v. Escort Inc. to testify. It was the first time live testimony was allowed in an oral hearing.

The inventor faced a series of tough questions at the hearing and the patent was ultimately found invalid.

“If you read through the transcript from that hearing, you can see that it did not go so well for the party that offered the witness,” said Ward, who is now a partner at Finnegan Henderson Farabow Garrett & Dunner LLP.

“That may have unfortunately served as a deterrent to subsequent parties looking at the one and only case where there was a live witness,” he said.

Live testimony is only available at the PTAB in “limited circumstances,” the board has said. But the board has signaled recently that it may be more receptive to such requests than it has been in the past, attorneys said.

This year, the board designated its decision in the K-40 case as precedential. PTAB judges then allowed an inventor to testify in MPOWERD Inc.’s challenge to a LuminAID Lab LLC patent.

“I think that there probably are more situations where it would behoove a party to request live testimony,” Ward said.

4. Some Better Than None

PTAB reviews typically involve a challenge to numerous patent claims. Attorneys and judges alike tend to want to simplify matters and concentrate on just one claim in the patent, Carmichael said, but attorneys should take all the claims into account.

“People that haven’t been a judge don’t recognize that making an all-or-nothing decision is what’s easiest for the judge,” Carmichael said, referring to a decision in which every claim is either found invalid or upheld.

Carmichael said part of the lawyer’s job at the hearing is to make sure their client doesn’t leave with nothing, giving the other a clean sweep. Patent owners, for example, only need one infringed claim to survive review in order to have a viable patent infringement suit in district court.

“If you establish that you’re at least entitled to some, then the judge might turn it into all,” Carmichael said. “At the very least, let it be some. Make sure it is some and not none.”

5. Remember Remote Judges

Not all PTAB judges work from the patent office’s Alexandria, Va. headquarters. Judges are located around the country, with some working from home and others at satellite offices in Detroit, San Francisco and other cities. Remote judges participate in hearings via a video connection.

Meeker said attorneys need to tailor presentations, including charts and other exhibits, for judges who are not physically in the room. An attorney who projects an image on the hearing room wall, for example, is overlooking remote judges.

“They’re only speaking to whatever judge happens to be in the courtroom,” said Meeker. He said attorneys should submit presentation materials ahead of time, and use page numbers to help remote judges follow along.

Attorneys should also be careful not to talk over or interrupt remote judges, Meeker said.

To contact the reporter on this story: Matthew Bultman at mbultman@correspondent.bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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