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
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.
- Evidentiary standards at the PTAB
- Weight and admissibility of evidence
- Timing of evidence submitted
- Submission by the petitioner
- Submissions by the patent owner
- Challenging evidence and expert testimony
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?
Scott E. Kamholz, M.D., Ph.D.
Dr. Kamholz has rejoined the firm after several years of service as an Administrative Patent Judge (APJ) on the... | Read More
Dr. Kamholz has rejoined the firm after several years of service as an Administrative Patent Judge (APJ) on the Patent Trial and Appeal Board (PTAB). As an APJ, he handled over 100 inter partes review (IPR) and covered business method review (CBM) proceedings. He now leverages his knowledge of the PTAB trial process to assist clients with AIA trial matters. Before his appointment as an APJ, he had extensive experience obtaining patents, evaluating infringement and product clearance concerns, representing clients in licensing and acquisition transactions, conducting patent reexamination proceedings, and consulting in litigation.Close
Teresa (Terry) Rea
Crowell & Moring
Ms. Rea is a Partner in the firm's Intellectual Property Group and a Director with C&M International... | Read More
Ms. Rea is a Partner in the firm's Intellectual Property Group and a Director with C&M International (CMI), the international trade and investment consulting firm affiliated with the firm. She is the former Acting and Deputy Director of the USPTO, as well as Acting and Deputy under Secretary of Commerce for Intellectual Property. Her practice concentrates on working with clients in several key areas, including IP policies and strategies, patent enforcement and post-grant administrative proceedings, trade secrets policy and enforcement, and digital/Internet related copyright issues.Close
James Donald Smith
Chief IP Counsel
Mr. Smith is the former Chief Judge of the Patent Trial and Appeal Board where he led the Board during the... | Read More
Mr. Smith is the former Chief Judge of the Patent Trial and Appeal Board where he led the Board during the implementation of the America Invents Act, which has seen the Board handle thousands of cases under new proceedings created by the law. Before joining the PTAB, Mr. Smith was Associate General Counsel and Chief Intellectual Property Counsel at the healthcare company Baxter International Inc.Close