Winning at the PTAB: IPWatchdog LIVE Panelists Warn, Don’t Be Flashy

From left: James Carmichael, Nicholas Matich and Sarah Spires.

On the second day of IPWatchdog Live in Dallas, Texas, a panel of attorneys shed light on how to triumph at the Patent Trial and Appeal Board (PTAB). The differences between PTAB and district court proceedings are many. Unlike the majority of district court judges, the Administrative Patent Judges (APJs) consist of technically savvy engineers and scientists. Additionally, there are evidentiary standard and procedural differences for inter partes reviews (IPRs) at the PTAB. The distinctions between the two parallel forums creates strategic differences that practitioners must consider if they hope to succeed. 

In district court, successful attorneys often create a narrative which paints their client as the “good guy” and the opposition as villainous. While this strategy of painting a picture that can connect with judges and juries on an emotional level is often successful in district court, the panelists cautioned against this approach at the PTAB. One of the panelists noted that, due to the fact that the APJs possess technical backgrounds, these emotional appeals are likely to fall on deaf ears and may prove counterproductive. Instead, more technical conversations will be persuasive in this forum. Panelist Sarah Spires of Skiermont Derby said, “[t]he [PTAB] is not impressed by flash. They want someone who can engage with them on the technical arguments.” In fact, many APJs are likely to find these appeals to emotion insulting to their intelligence and technical prowess.

Another common misstep that is seen frequently is the poor utilization of expert declarations. Unlike briefs, which are subject to more stringent page limits, expert declarations provide room for PTAB litigants to dive deeply into the heart of the technologies at issue. However, as often happens, expert declarations appear to be “carbon copies” of briefs. This is a giant missed opportunity that often results in expert declarations being deemed as merely conclusory by APJs.

Many representatives presenting before the PTAB make the mistake of arguing that their client’s patented invention works better than the prior art. Though the panelists conceded that this is not as poor of a choice for the more unpredictable biotech field, in the more predictable arts, this can be a patent killer. In the more predictable arts, this argument serves to plant the seed in the mind of the APJs that the invention, though possibly better than the prior art, is also obvious.

The IPR proceeding provides patent owners with an option to motion to amend claims that are at issue in order to save the validity of the patent. However, this is an option that the panelists unanimously cautioned against. A major concern of amending claims during an IPR is the bar this will create on obtaining past damages. If the patent owner hopes to collect for an infringer’s prior conduct, amending the claims will remove all hopes of this. Additionally, patentees are typically hesitant to opt to amend due to the fact that this creates a perception that the inventor made a tacit admission of invalidity.

Noting the relatively new Phillips claim construction standard, both the panelists and attendees cheered many of the changes to the PTAB implemented by former United States Patent and Trademark Office (USPTO) Director Andrei Iancu. The panelists noted that, like many things in the country, the USPTO has become more politicized in recent years. However, this was not seen as negative per se. One response to the increased politicization has been the formation of advocacy groups as a voice for further reforms that may serve as a catalyst to impact the implementation of even better procedures going forward.

In addition to Spires, the panel featured former APJ James Carmichael of Carmichael IP and Nicholas Matich of McKool Smith.