Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

Selecting and Tailoring Evidence, Timing of Submission by Petitioner and Patent Owner, and Best Practices for Challenging Evidence

Former PTAB judge panel

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, April 14, 2016

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with guidance for navigating evidentiary issues in PTAB trials. The panel will look at PTAB evidentiary standards, address types of permitted discovery, contrast the weight versus admissibility of evidence, review timing requirements, and examine evidentiary objections. The panel also will discuss best practices for the use of expert witnesses and considerations for ensuring that a evidentiary record stands up to Federal Circuit review.

Description

Evidence is the lifeblood of every PTAB trial. As in any other litigation, success at the PTAB requires evidence to support all rulings on the merits. But unlike almost any other tribunal, the permissible scope of evidence, and the timeline for its introduction, are sharply limited and rarely relaxed except when “in the interests of justice.” 37 C.F.R § 42.51(b)(2). The unforgiving nature of PTAB proceedings requires that patent counsel appearing before the PTAB plan a detailed evidence strategy at the earliest stages of preparation and maintain an intimate understanding of the PTAB evidence procedures throughout trial. The deferential “substantial evidence” standard of fact review at the Federal Circuit merely underscores the critical importance of understanding the cadence of evidence procedure at the PTAB.

Patent counsel at the PTAB also must understand their “audience” and that administrative patent judges, unlike most district court judges, are able to carefully examine scientific evidence.

Timing is also important. Counsel must recognize when both petitioner and patent owner can submit evidence and the limitations. In a recent decision, the Federal Circuit held the PTAB can refuse to consider timely filed supplemental information from a petitioner pursuant to 37 C.F.R. § 42.123(a). [Redline Detection v. Star Envirotech (Fed. Circ. Dec. 31, 2015)]. While the rule permits the filing of a motion to file supplemental information, the PTAB is not obligated to consider the information. Counsel should plan to provide such information with the petition.

The patent owner and his counsel should carefully examine proffered evidence to identify anything objectionable. Evidentiary objections should be kept in mind. Motions to exclude are not granted often at the PTAB, but they should not be forgotten. Counsel needs to be prepared to challenge evidence.

Listen as our authoritative panel of patent attorneys reviews the evidentiary standards for PTAB trials and examines the weight and admissibility of evidence, timing of evidence submitted by the petitioner, and timing of evidence submitted by the patent owner. The panel will discuss challenging evidence as well as the analysis and conclusions of an expert.

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Outline

  1. Evidentiary standards at the PTAB
  2. Weight and admissibility of evidence
  3. Timing of evidence submitted
    1. Submission by the petitioner
    2. Submissions by the patent owner
  4. Challenging evidence and expert testimony

Benefits

The panel will review these and other key issues:

  • How can practitioners prepare and submit evidence to support the petitioner’s or patent owner’s position?
  • What limitations do patent owners face in submitting evidence?
  • What best practices should practitioners employ when challenging evidence and expert analysis?

Faculty

Scott E. Kamholz, M.D., Ph.D.
Scott E. Kamholz, M.D., Ph.D.

Partner
Foley Hoag

Dr. Kamholz has rejoined the firm after several years of service as an Administrative Patent Judge (APJ) on the...  |  Read More

Teresa (Terry) Rea
Teresa (Terry) Rea

Partner
Crowell & Moring

Ms. Rea is a Partner in the firm's Intellectual Property Group and a Director with C&M International...  |  Read More

James Donald Smith
James Donald Smith
Chief IP Counsel
Ecolab

Mr. Smith is the former Chief Judge of the Patent Trial and Appeal Board where he led the Board during the...  |  Read More

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