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

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Tuesday, December 17, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course 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 an evidentiary record stands up to Federal Circuit review.
Faculty

Mr. Krieger is a first chair inter partes review and post-grant review litigator with an over 90% win rate in both challenging third-party patents and defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on district court and ITC litigation, client counseling, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. Mr. Krieger lectures and publishes frequently on various IP topics.

Mr. Baylor focuses his practice on intellectual property matters in the life sciences industry. He prosecutes patent applications related to small molecules, pharmaceutical macromolecules, medical devices, agricultural chemistry, nutraceuticals, synthesis and use of nucleic acids and polypeptides, cell culturing systems and apparatuses, methods of culturing cells and methods of preparing tissue grafts. Mr. Baylor also has experience advising clients on inventions in the fields of chemical engineering systems, lithium batteries, manufacturing flooring composites, 3D printer filament compositions, and cellulose-based packaging materials. He develops go-to-market strategies for clients by providing detailed opinions on clients’ freedom to operate and the patentability of inventions. He assesses potential infringement by competitors and the validity of competitors’ intellectual property in anticipation of and preparation for litigation. Mr. Baylor also advises clients on comprehensive defense strategies in ongoing infringement litigation by providing invalidity and non-infringement analyses in coordination with co-counsel and expert witnesses.

Mr. Alemanni focuses his practice on trials before the Patent Trial and Appeal Board and related appeals to the U.S. Court of Appeals for the Federal Circuit. His practice also includes client counseling, patent litigation and strategic patent prosecution. Mr. Alemanni has served as lead or back-up counsel on over 130 trials before the PTAB. He also helps manage the portfolios of both established and emerging companies, including a company consistently ranked at the top of its category in the IEEE Power Spectrum Patent Power scorecard and having generated licensing revenues of more than $250 million dollars. Mr. Alemanni focuses on hardware and software technologies, including mobile devices, gaming, bioinformatics and laboratory information management, as well as mechanical and electro mechanical devices, including aerospace components, medical devices and medical device simulations.
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. 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.
Outline
- 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
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?
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