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
- work Practice Area
Patent
- event Date
Thursday, April 14, 2016
- schedule Time
1:00 PM E.T.
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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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 a evidentiary record stands up to Federal Circuit review.
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.
- 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?
