Straight From The Judges' Mouths: Lessons For Persuading The Board

The USPTO’s Patent Trial & Appeal Board (PTAB) hosted its June Boardside Chat, which addressed best practices for presenting patentability/unpatentability arguments before the board. The Chat, which was hosted by Administrative Patent Judges (APJs) Jay Moore, Christopher Crumbley, and Kal Deshpande, provided valuable guidance for best-practices in the context of IPR proceedings.

Judge Crumbley began the Chat by discouraging parties from incorporating so-called "kitchen sink" arguments in their briefs. In other words, he stressed that briefing "weaker" arguments often obscures "stronger" ones, thus decreasing overall persuasiveness of the brief. Interestingly, Judge Crumbley indicated that this dilution effect also extends to situations where a petitioner files multiple petitions against the same patent. That is, including weak arguments in one petition can detract from the persuasiveness of stronger arguments in a second petition against the same patent.

The panel also cautioned against incorporating emotion, exaggeration, or puffery during briefing. For instance, using exaggeration or puffery run the risk of losing credibility with the board. Moreover, at least some judges view emotional language (e.g. referring to a petitioner's position as "ridiculous" or stating the "the Patent Owner stubbornly refuses to concede . . .") in a negative light, and would prefer that the brief be devoted to meritorious arguments only.

The panel also discussed the importance of expert testimony to their ultimate decision. The judges stressed that effective expert testimony supplements and provides context for attorney arguments in a brief. The panel suggested that such testimony be supported by extrinsic evidence, or the board may discount the testimony as mere opinion evidence. Also important is that the testimony come from a credible expert. Credibility can be assessed, for example, by reviewing whether the expert has previously published articles that directly contradict statements made before the board.

On a practical level, the judges cautioned against citing to expert testimony or other evidence in a brief without also including specific language from those documents. Incorporating the specific language allows the judges to fully consider arguments in the brief without first tracking down a lengthy string of citations (e.g., the panel discouraged citing to expert testimony, which cites in turn to literature evidence, unless language from the expert and/or literature are also included in the brief). To paraphrase Judge Moore: Chasing down a string of citations makes the judges lose their train of thought, which is not what you want to happen when they are considering your arguments.

We thank Judges Crumbley, Moore, and Deshpande for taking the time to discuss their views on the sort of best-practices that might be used in PTAB proceedings. Any party with a current or potential proceeding before the board should keep this advice in mind as they prepare their case for presentation to the board.

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