Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

By: S. Christian Platt and Michael Lavine

On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”).  During the conference, a panel of Administrative Patent Judges provided helpful, practical tips to practitioners with matters before the PTAB.  Judge Georgianna Witt, from the Dallas Regional Office, moderated a panel consisting of Judges Kevin Turner, Christa Zado, Tina Hulse and Kevin Trock, all based in the Silicon Valley Regional Office.  The panel covered a variety of issues, including both written and oral advocacy before the PTAB.

Written Advocacy: Tips on Presenting Compelling Arguments

1. Emphasize Factual Issues. On written advocacy, the judges emphasized that addressing factual issues is of critical importance.  Unlike issues related to claim construction, which may be reviewed by the Federal Circuit de novo, factual determinations reached by the PTAB are reviewed by the Federal Circuit to determine if there is substantial evidence to support the PTAB’s findings.  Moreover, including factual issues in your briefing requires the other side to respond and address those facts, which provide more clarity for the PTAB judges.
2. Address Weaknesses and Disputes Head-On. Each case has weaknesses and the panel advised that the parties should address those weaknesses in their briefing.  The panel explained that weaknesses always come out in a case and if you do not proactively address them, the other side will.  It is important to come to grips with the problem and propose a solution to it.  Do not ignore your weaknesses or gloss over them – take them straight on.  The panel also emphasized that they do not want to learn of disputed issues for the first time at oral argument.  Rather, be sure to address those issues in your brief.  By doing so, it gives you the opportunity to clarify the issue and explain the impact that it will have on the merits of the case.
3. No Conclusory Positions. The judges cautioned that conclusory positions, which they routinely encounter in briefing and expert declarations, are ineffective.  For example, stating that one of ordinary skill in the art would have been motivated to combine several references, without more, does not meaningfully explain what is the motivation to combine and is therefore unpersuasive to the PTAB.  An explanation supporting the position should be included.  The panel also commented that attorney argument – without supporting cites to testimony or references in the record – is simply not persuasive.
4. Specific Cites To Relevant Case Law and Evidence. The panel also reminded practitioners that PTAB judges can dedicate only a limited amount of time to each matter, and they do not have law clerks.  Therefore, practitioners should not simply leave it up to the panel to find legal support or locate the evidence in the record.  Rather, practitioners should be looking for opportunities to provide the panel with good legal and factual support.  This includes citing to relevant, legal cases and providing specific pin cites to supporting evidence.  Briefs with concise and easily located support results in the best advocacy, and makes it easy for the PTAB to agree with your position.
5. Non-Precedential Opinions Can Help. The judges did not object to practitioners citing relevant non-precedential opinions.  A PTAB panel is not bound by non-precedential opinions, but may still find them informative if they show how other panels handled similar issues.
6. Pay Attention to Citation Format and Page Numbering. With respect to citation format, the judges recommended figuring out who your authoring judge will be and finding other decisions that they have authored.   You can then use that judge’s general format in your briefing.  Of course, Bluebook formatting is also acceptable.  Also, the judges generally prefer using any pre-existing page numbers in exhibits, and indicated that it would be helpful to assign page numbers in long exhibits or exhibits without pre-existing page numbers, such as a file wrapper.
7. Use Consistent Exhibit Numbering Across Related Cases. In instances where there are multiple, related cases, the judges recommend that the parties use the same exhibit numbers over multiple IPR petitions.  Be sure to refer to exhibits by number—rather than name—as the judges do not have time to cross-reference the name of an exhibit with its number.  When uploading exhibits to the USPTO’s End-To-End System, practitioners should provide both the exhibit number and the short title of the exhibit in the name of the document.  This helps the judges find exhibits more easily and allows them to spend more time on the substance of your case.
8. Focus On Your Strongest Arguments. The panel also addressed a common dilemma encountered when filing petitions for Inter Partes Review in light of estoppel concerns: Should you take the kitchen sink approach or focus on your best arguments?  The panel commented that it would be better to make fewer, more focused arguments.  If you have nit-picky or ministerial arguments, the panel recommended putting those at the end of the brief, or simply leaving them out altogether.  In organizing a petition, always focus on your strongest arguments first—and put the weakest at the end.
9. Request Reply Briefing To Address New Issues. Finally, the panel discussed reply briefs following the Patent Owner’s Preliminary Response.  If the Patent Owner raises new issues that were not anticipated at the time of the filing of the Petition, the judges would consider a request from the Petitioner for leave to file a reply brief.  The judges explained that they would rather have more—compared to less—clarity on the issues.

Oral Advocacy before the PTAB: Do Not Forget Your Audience

1. Know The Record. The panel also provided helpful comments on oral argument.  The most important and unanimous comment: know the record.  Let the person who knows the record argue it—even if that person may be a more junior attorney.  The panel explained that attorneys should recognize that the panel will have read the papers and any PowerPoint presentation submitted in advance of the oral argument.  Thus, the attorneys should not spend significant oral argument time on the background unless such information is central to the dispute.  Keep in mind the panel is made up of skilled patent judges—not a jury—and they are not generally moved by an emotional story of someone’s invention story.
2. Answer The Question Asked. One of the most important tips provided by the panel was that when you are asked a question by a judge at oral argument, answer it.  Do not defer or avoid the question by saying “I’m getting to that later in my presentation.”  Doing so simply infuriates and annoys the judges—and may weaken your argument.
3. Explain Key Arguments Clearly. Take time to explain your key arguments and make sure that the judges are following you.  The panel commented that there is nothing worse than an attorney rushing through dozens of slides and missing their key audience.  In fact, as you argue, the judges may be following along in the record, and opening key exhibits to confirm your argument.  If you fly through the presentation, the judges will not be able to keep up.  Do not slavishly lock into your slides.  Be prepared to address questions from the panel and move fluidly between relevant sections of your presentation.
4. Research Your Judges. The panel recommended reviewing transcripts of prior oral arguments held before your judges.  It will give you a sense of how soon the questions will begin—and how many questions you should expect to receive.  Keep in mind that the judges may hijack your oral argument; they are likely to have specific questions on specific issues and will quickly hone in on the issues.
5. List Key Issues In Rebuttal Time: The panel commented that if practitioners want to highlight certain arguments during rebuttal, they should list those arguments succinctly on the record.  The judges go back to the hearing transcript when writing the final written description.  Providing those succinct lists or summaries of the main issues provide the judges with a helpful roadmap when writing the final written decision.

The Panels’ Parting Advice: Civility and Credibility Matter

The judges’ parting advice should come as no surprise:  First, get along.  There is nothing more irritating to the judges than parties that disparage each other and refuse to reach agreement on simple issues.  Fighting every fight will not score you any points.  Second, credibility is king.  Concede simple and obvious issues.  Nothing hurts your credibility more than refusing to concede the obvious: it cascades to all your other positions.  Third, PTAB litigation is not scorched earth litigation.  Avoid knee jerk motions to exclude, especially broad motions to exclude that make it appear as if you do not understand the Federal Rules of Evidence.  Finally, keep in mind that the judges are not automatons.  They do talk to each other and if an attorney lacks credibility or engages in uncooperative behavior, that can reflect poorly not only on the attorney but also her or his law firm.