Polsinelli PTAB Notes: 5 Takeaway Points From the First Ever PTABBar Conference and First PTABBar Webinar

By: Ryan Murphy

On March 1-3, 2017 the PTABBar Association had its first annual conference. The conference started with a “Bootcamp” for attorneys, which explained the different proceedings available at the Office, with special focus on the Inter Partes Review Proceeding. The Conference then proceeded to address the current state of proceedings before the Office and address important issues facing the Bar. Prior to the PTABBar Conference, the Association also produced and distributed a Webinar. Below is a list of topics that we found interesting, along with summaries of how those topics were addressed by the Speakers of each event.

1.  Chief Judge Ruschke specifically singled out and pushed PGR proceedings

He specifically mentioned that prior to becoming Chief Judge, at his previous job they had spent considerable time planning how to use PGR proceedings. Finding ways to use PGRs was raised throughout the conference, as multiple in-house attorneys commented on the likelihood of using PGRs in the future, and likened them to opposition proceedings they are familiar with in Europe. This appears to be a growing area, where practitioners should actively present to clients as it can be a cost effective and powerful tool for achieving client objectives.

2.  The PTABBar Conference: Current and Former PTAB judges Provide Guidance

One of the points stressed by most of these panels is that the most important factor for oral hearings is familiarity with the record and facts of the case. One take away from this idea is that they recommended utilizing the person on the team that was most familiar with the record. They mentioned that in many cases, this person is a younger member of the team, but they encouraged firms to allow young associates or junior partners to argue the cases. They mentioned that one of the great annoyances of oral hearings is when the person arguing, while clearly the senior member of the team, had to repeatedly ask the second chairperson for guidance on where certain issues were raised in the record. They would rather just talk to the second chair attorney, even if the presentation is less polished because the attorney has never argued at oral hearing previously.

3.  Filing POPR Affects Initiation; Expert Declaration – Not So Much

During one panel, a recent study was presented where the Patent Owner Preliminary Responses (POPR) were analyzed to determine if providing an expert declaration was beneficial to preventing Institution. Over the course of 100s of cases, it became clear that while filing a POPR resulted in an increased rate of denial of Institution, there was no statistically significant impact on including an Expert Declaration in the POPR. This actually confirmed statements made by current PTAB Judges, who advised that POPRs should focus on claim construction and procedural issues, because any fact dispute has to be weighed in favor of the Petitioner. Accordingly, based on the current study as well as the Judge’s comments, it seems that Judges are not typically swayed by Expert Declarations by the Patent Owner prior to Institution, and that it is strategically more useful to focus on factual issues with an Expert Declaration only after the proceeding is instituted.

4.  Frame Patent Challenges to Explain Why Views and Conclusions Can Differ

One useful drafting and argument technique that was raised by a judge is to frame any challenge to a patent by trying to explain what nuance in the art or claims allows for two qualified and honest experts to reach completely different conclusions? This judge did not appear find it useful to assume one party was lying or just plain wrong, but instead there had to be some nuance that allowed two people to view the same issues in two separate ways. By framing the issue in this way, you can allow a judge to see your side of the argument, and how the nuance in the case benefits you. 

5.  USPTO Calls for Better Baseline PTAB Statistics

There was also a call by the leadership of the USPTO for a baseline for statistics so that industry and government can discuss institution, cancellation, and confirmed claims via an apples-to-apples comparison. Currently the UPSTO has some limitations on how they can drill down into the data, and they currently focus on claims after institution. Some vendors and firms take a different view and count claims filed against. So, in the end the different comparisons lead to divergent statistics that cause miscommunications between the USPTO and the public. The USTPO was soliciting a standard that can be adopted so that everyone can operate from the same baseline and changes can be made based on that baseline.

6.  The Goal is to Get a Technical Truce – Demonstrate Proficiency with Technology

Speakers explained that from their perspective, to be successful before the PTAB, it is crucial that counsel demonstrates proficiency with the technology in dispute. For this reason, it is their opinion that technical skill takes precedence over proficiency in trial work. Post 2012, parallel proceedings in the PTAB and district courts has become the rule. While it may be tempting to assume counsel’s skill set for litigation and IPRs are the same, this assumption is often misplaced. IPRs lend themselves to more technical arguments than their district court counterparts. Further, Judges at the PTAB have said that the goal of an IPR is to reach a technical truce. To reach this technical truce, judges at the PTAB will be interested in getting to the bottom of complicated technical issues. It is therefore the responsibility of counsel to identify and explain the most relevant technical details. With the technical skill of the PTAB in mind, everything from filing the IPR petition to depositions and arguments before the board will need to be tailored to technical proficiency. For this reason, counsel who are a unique fit with the technology and/or are specialists in the technical area will have an advantage over counsel who are skilled litigators but generalists in the technology.

7.  Stay Current on PTAB Procedure

PTAB rules and procedures are currently in flux, and a misstep could prove fatal to a case. Counsel must have a deep understanding of the PTAB, including how it works and where it’s going. In fact, in house counsel state that they often weigh experience with the PTAB and an ability to anticipate PTAB trends more heavily than trial experience when selecting outside counsel for representation. In some cases, PTAB experience is a top consideration.

8.  Prior Art – Narrow It Down

If possible, counsel should narrow down the prior art to a couple of good references. Redundancy can be a problem at the PTAB, and inundating the PTAB with too much art seldom goes well. In addition, counsel should prioritize selecting prior art that is clear and/or easy to understand.

In house counsel has also indicated that they dislike being asked to choose from a large number of references. Narrowing prior art is tough, and in house counsel have hired technical and experienced counsel to make quality recommendations of the best art for the case. In house counsel appreciate receiving an already narrowed down set of prior art to consider with an explanation as to the reasons for selecting the chosen references.

9.  Petitions are Paramount

Petitions make or break the case – it is almost impossible to salvage a broken petition. A common mistake is to try to hide a weakness in the case, but this strategy seldom proves successful in IPRs. It is far stronger to put the best arguments forward and tackle any weaknesses in the case head on and immediately. The judges are technically savvy and will spot weaknesses anyway, so unmitigated weaknesses will only harm the case. In addition, counsel should narrow down their arguments to those that are the strongest and most relevant. While backup positions may be helpful, practitioners should avoid the kitchen sink approach to an IPR petition, as too many proposed rejections is often just as harmful as too few.

10.  Litigation vs. IPR Teams: Together or Separate?

Since many IPRs have a district court counterpart, the IPR and litigation strategy must work together and, ideally, complement each other. Whether the litigation team and the IPR team are the same or separate from each other, in house counsel want to be confident that both the IPR and district court case can be done at the same time. If the IPR and litigation teams are the same, in house counsel want to make sure the neither the IPR nor district court case will take undue priority over the other, and that both proceedings can be done thoroughly and competently. If the teams are separate or come from different firms, then make sure that the cases will work seamlessly together. Clients have indicated an interest in whether there is experience working cross group and/or cross firm.  If a practitioner has this experience, it can be beneficial to put together a joint representation group when pitching to the client that combines the strengths of both groups/firms.