ARGUING YOUR APPEAL BEFORE A PANEL OF THE BPAI

IN AN INTER PARTES REEXAMINATION

Kevin F. TurnerAdministrative Patent Judge

Board of Patent Appeals & Interferences

United States Patent and Trademark Office

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Outline of Discussion

• Today, we will discuss:– Whether an oral hearing is appropriate– Things to consider about oral hearings– Some “do’s and don’ts” (from the

Board’s perspective)

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IS IT NEEDED?

• 37 CFR §41.73(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

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IS IT NEEDED?

• Appellants or Respondents may be better served by not appearing, based solely on their briefs

• Cross appeals by Third Party Requesters or Patent Owners may not need oral arguments

• Attending the hearing may provide as much feedback as arguing

• In cases of merged proceedings, may already have enough “cooks”

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THINGS TO CONSIDER

• Limited Time– In IPR, each party is limited to 30 minutes, which

usually includes questions from the panel• Limited to Arguments Previously Raised

– Judges often inquire about where a particular argument can be found in the brief

– Exceptions in certain circumstances See 37 CFR §41.73(e)(2) – recent relevant decision

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THINGS TO CONSIDER

• Open to the Public

– Unless a petition under 37 CFR §41.3 has been granted, based on “sufficient reasons,” everyone gets to come

• Visual Aids

– Must already be in the record or they will not be considered

– Judges have the electronic file in front of them

– Must make a request beforehand (AV)

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THINGS TO CONSIDER

• In person, or via telecommunications– The Board has the capability to hear cases

telephonically or through video conference• Structure of oral arguments

– Not every issue in a brief may be covered in the time allotted

– Issues that are more nuanced should be emphasized– Arguments that require visualization may be best

served through oral hearings

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Do’s

• Be on time– multiple cases are heard on same day

• Be courteous to the opposing party and Board personnel (& the Examiner, potentially)

• Study and consult the statutes and rules– appealable versus petitionable, for example

• Be knowledgeable of the record and where the sources of arguments originate

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Do’s

• Presume that the panel has spent considerable time studying the issues and facts in the case, and in many instances, may have already formed some initial impressions about the issues

• Expect questions you might not have considered– “What’s your best argument?”– “What if we remand this case?”– “Hypothetically . . .”– “How can we provide the relief you seek?”

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Don’ts

• Don’t read from a script– Generally a waste of time because rarely, if ever,

does it address the questions that the judges have on their minds

• Don’t ignore or sidestep questions from the bench– Questions often indicate concerns the judge may

have in ruling in your favor– If you don’t know, or don’t have an answer, you

should so state

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Don’ts

• Don’t request a change in hearing date or time unless exceptional circumstances (“convincing reasons”)

• Don’t expect to rely on oral testimony– One party argues (but can have

multiple advocates)– Inventors and experts remain sidelined

(unless pro se advocate)

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Thank You

Q & A