Standing Before the Panel: Strategies for Post-Grant Oral Hearings

December 11, 2013

All of the written submissions in your post-grant proceeding have been filed and served. Now it’s time to stand up in front of your panel of PTAB judges to present your case at the oral hearing. What should you expect and how best can you prepare?

In Part XI of our series, Karl Renner, one of the co-chairs of Fish & Richardson’s post-grant practice, Tom Rozylowicz, and David Holt discussed their recent experiences in oral hearings in both inter partes review and covered business method cases. They discussed strategic considerations and proposed practice tips based on their personal experiences and their observations from other oral hearings.

Karl Renner, Principal & Post-Grant Practice Co-Chair, Washington, DC
Thomas Rozylowicz, Principal, Washington, DC
David Holt, Associate, Washington, DC
Download Presentation Slides

Webinar Summary

  • Aspects of the Proceeding
    • Usually 1 hour per side
      • Panel’s questions and responses thereto occupy about 40% of allocated time
    • Order of presentation:
      • If no amendment at issue: Petitioner-Patent Owner-Petitioner
      • If amendment at issue: Patent Owner-Petitioner-Patent Owner
    • Rebuttal – limited to responding to issues raised by other party in previous presentation
    • Expect questions soliciting detailed information about the record, exploring technical and legal issues
      • Lots of references to record, especially expert declarations
      • Claim construction issues often dominate
    • 3-member panel / question-answer format
  • Demonstratives
    • Usually slides plus pass-out binders for panel members and court reporter
    • Animation or video permissible (with advance notice)
    • Must serve copies on PTAB and opposing party 5 days in advance
    • All demonstratives must have support in record
    • Roles of Demonstratives
      • Persuasion – opportunity for in person conversation
      • Vetting – e.g., where did earlier record fall short?
      • Minimize burden – opportunity to emphasize 5-10 key aspects
    • Demonstratives *cannot* introduce new arguments (i.e., arguments not already of record in previous filings)
      • Each demonstrative has to cite to support in record, otherwise *ALL* demonstratives may be disallowed
      • Record support must be specific, precise & correlate very closely with assertions being made in demonstratives
      • Takeaway: Be overly pedantic in pointing out record support for each demonstrative
  • Fairness
    • Focus is on fairness
      • No surprises: everything raised at oral hearing must have already been previously briefed and addressed by both parties
  • The Panel Itself
    • Expect considerable depth, both technically and legally
  • Update on Post Grant Statistics
    • 697 IPRs filed through November 2013
    • 93 CBMs filed through November 2013
    • IPR/CBM instituted in most cases (~88%) but almost always with (significantly) pared down grounds and/or claims
    • Stays in related district court proceedings
      • Granted ~73% ; Denied ~27%
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