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

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.