United States: Best Practices In Oral Argument In An Inter Partes Review Hearing

Oral hearings before the United States Patent Trials and Appeals Board ("the Board") in inter partes review proceedings are a relatively new phenomenon confronting patent attorneys. However, a number of best practices have already emerged for success in oral argument. 

General Format and Procedure of Oral Argument

The oral hearings themselves resemble the format for an appellate oral argument. While the Board may receive live testimony or video deposition testimony at the hearing, permission to present such testimony has, to date, been rarely given. Therefore, in making the oral argument, the standard advice for any appellate oral argument applies. Be careful to listen to and respond to the question actually asked. Answer the question directly with "yes" or "no" whenever possible and then follow with further explanation if need be. You should remain polite but firm, and maintain your argument in a way that is respectful to the judges. Do not abandon key points in your argument simply because a judge asks a question that seems to be an attempt to extract concessions. Credibility is key and can be accrued with the judges if you are prepared to concede a "bad point" where it is a point that can be explained as not controlling. Many questions tend to be prefaced by outlining the opponent's position and thus can be lengthy. Of course, it goes without saying to allow the judge to finish the complete question before attempting an answer. 

Bear in mind that the hearings are transcribed by a court reporter who is generally unfamiliar with the specifics of the case. The court reporter may be hearing many of the highly technical terms of the claims or prior art for the first time. Therefore, it is important to maintain a steady pace of speaking for the court reporter and look at him or her occasionally to ensure you are being heard and understood. Points made during oral argument may be relied upon in an opinion and it is important that the transcript be accurate for any appeal. 

Prior to the hearing, the sides can request their preferred length of time for oral argument. Generally, the amount of time provided by the Board depends upon the judges involved, complexity of technology or legal issues, the number of patent claims and amount of prior art. In usual cases the Board will grant each side forty-five minutes to an hour in which to present their case. The Petitioner is first to present its case, with the right to reserve some of its time for rebuttal to respond to Patent Owner's presentation. A typical Petitioner might elect forty minutes for argument while reserving twenty minutes to respond to the Patent Owner.  

In practice, the majority of time at the hearing may be spent explaining those points of the technology on which the judges wish to have their understanding clarified. This is particularly true for the Petitioner, who bears the legal burden of proof before the Board. For the Petitioner, rebuttal time may be spent further clarifying issues discussed during the initial presentation of its arguments, responding to specific points raised by opposing counsel or, of course, addressing questions from the Board. Rebuttal is not a time to make new arguments or summarize or re-state the earlier argument.

Planning for Oral Argument

For the Petitioner planning for oral argument should begin before the petition is filed, while for the Patent Owner it should begin before the Patent Owner Statement is filed. That is because new arguments at the oral hearing stage of an inter partes review are strictly forbidden. Attorneys should expect that if the judges consider an argument to be new, then the attorneys will be asked to provide a direct citation to where in the previously filed papers that the particular argument has been raised. The panel will be very prepared and ask highly technical questions regarding the subject matter at issue in the inter partes review. In particular, the panel will ask questions designed to press on any perceived technical weaknesses in either side's case. Attorneys should have an excellent working knowledge of the science or technology contained within the references upon which the Board instituted the inter partes review. Attorneys should also be able to discuss the science or technology in the background art as well, if need be. 

While much of the oral argument will be spent discussing the technology at issue and prior art, attorneys should also be prepared to provide case support for arguments on specific legal issues. Such legal issues include, for example, obviousness and whether there is a proper nexus between the claims at issue and alleged secondary considerations of obviousness. However, most panels will not typically spend their time discussing case law with the attorneys, but will rather concentrate on what they see as the key points in the technology before them. 

It is extremely worthwhile to prepare an oral argument outline for a full presentation of the case before the panel. However, the primary benefit of this exercise is to ensure the attorney has a satisfactory knowledge of all aspects of the case. Once the oral hearing begins, it is very likely that questions will begin very shortly into the presentation. As a result, while it is important to be prepared to discuss any aspect of the case discussed in the papers filed in the inter partes review, the ability to be flexible in explaining particular points that the panel considers to be key is crucial. In particular, attorneys should be prepared to jump forward or backward to discuss key demonstratives illustrating the fundamental points, rather than be wedded to proceeding through the presentation of demonstratives in a strict order. Due to time discussing technical questions asked by the panel, it is quite likely that less than half of prepared demonstratives will be used during oral argument. This is particularly true of the Petitioner as more questions may be directed to the party bearing the burden of proof.

Demonstratives for Oral Argument

For the creation of demonstratives, the Board often recommends review of two notices issued in prior IPRs as guides: CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118), and St. Jude Medical, Cardiology Div., Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65). Because of the strict prohibition against new arguments or evidence at oral argument, it is recommended that each demonstrative contains a cite to the place in the papers that have been filed where the information originally appeared. The presentations of each side must usually be served on the opposing side at least five business days before the oral hearing date. If there are any objections to the demonstratives prepared by either side, such objections usually must be raised at least two business days before the hearing date. In such a case, a telephone call with the Board may assist in resolving the objections. A slide projector for demonstratives can be requested before the oral hearing, which the U.S.P.T.O. may then provide with a VGA connection for connection to the attorney's laptop.

Arrive Early and Bring Passport

An additional wrinkle that some attorneys should be aware of is that the U.S.P.T.O. has instituted a "real I.D." program for security purposes, which means that driving licenses from certain states (including New York, amongst others) are not acceptable as identification. Attorneys who routinely use their New York driving license as identification should bring their passport instead. It is worth checking online before going to the oral hearing to make sure that your state is not one of those affected by the "real I.D." scheme. The current list of such states may be found at http://www.dhs.gov/real-id-enforcement-brief.


Succeeding at oral hearings before the Board in inter partes review requires the kind of preparation that usually precedes an appellate oral argument combined with a thorough knowledge of the technology, claims and prior art at issue. In addition, well-designed demonstratives that are properly sourced to the filed papers and which the attorney can use to effectively explain key arguments to the panel also play a significant role. By following these best practices, attorneys who are called to argue before the Board are more likely to succeed in clarifying the essential points of their case to the panel.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions