Straight From The Judges’ Mouths: Lessons For Persuading the Board

21 June 2016 PTAB Trial Insights Blog

The USPTO’s Patent Trial & Appeal Board (PTAB) hosted its June Boardside Chat, which addressed best practices for presenting patentability/unpatentability arguments before the board. The Chat, which was hosted by Administrative Patent Judges (APJs) Jay Moore, Christopher Crumbley, and Kal Deshpande, provided valuable guidance for best-practices in the context of IPR proceedings.

Judge Crumbley began the Chat by discouraging parties from incorporating so-called “kitchen sink” arguments in their briefs. In other words, he stressed that briefing “weaker” arguments often obscures “stronger” ones, thus decreasing overall persuasiveness of the brief. Interestingly, Judge Crumbley indicated that this dilution effect also extends to situations where a petitioner files multiple petitions against the same patent. That is, including weak arguments in one petition can detract from the persuasiveness of stronger arguments in a second petition against the same patent.

The panel also cautioned against incorporating emotion, exaggeration, or puffery during briefing. For instance, using exaggeration or puffery run the risk of losing credibility with the board. Moreover, at least some judges view emotional language (e.g. referring to a petitioner’s position as “ridiculous” or stating the “the Patent Owner stubbornly refuses to concede . . .”) in a negative light, and would prefer that the brief be devoted to meritorious arguments only.

The panel also discussed the importance of expert testimony to their ultimate decision. The judges stressed that effective expert testimony supplements and provides context for attorney arguments in a brief. The panel suggested that such testimony be supported by extrinsic evidence, or the board may discount the testimony as mere opinion evidence. Also important is that the testimony come from a credible expert. Credibility can be assessed, for example, by reviewing whether the expert has previously published articles that directly contradict statements made before the board.

On a practical level, the judges cautioned against citing to expert testimony or other evidence in a brief without also including specific language from those documents. Incorporating the specific language allows the judges to fully consider arguments in the brief without first tracking down a lengthy string of citations (e.g., the panel discouraged citing to expert testimony, which cites in turn to literature evidence, unless language from the expert and/or literature are also included in the brief). To paraphrase Judge Moore: Chasing down a string of citations makes the judges lose their train of thought, which is not what you want to happen when they are considering your arguments.

We thank Judges Crumbley, Moore, and Deshpande for taking the time to discuss their views on the sort of best-practices that might be used in PTAB proceedings. Any party with a current or potential proceeding before the board should keep this advice in mind as they prepare their case for presentation to the board.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services