When I was an Adminsitrative Patent Judge, I expected to go into an IPR trial hearing with a pretty good idea of who was going to win. I was surpised to find that rarely to be the case. I was far more open to persuasion at that point than I had expected to be.
Some commentators have likened PTAB trial hearings to oral argument at the Federal Circuit. The two bear some resemblance but the comparison is inapt. The big difference is that the Federal Circuit panel has a tidy set of briefs that address the full record on appeal, while the PTAB panel does not. Consequently, lawyers arguing before the PTAB have a greater burden and more opportunity than those before the CAFC: a greater burden to guide the judges through the record, and more opportunity to convince the judges of a particular interpretation of it.
What am I talking about? Doesn’t the PTAB panel have the Petition, the Patent Owner’s Response, and the Petitioner’s Reply? Well, yes, but the record in the PTAB rarely ends there. Replies often feature new declaration evidence, a phenomenon apparently unique to the PTAB. (Curtailing those might be another good way to conserve judicial resources.) The Patent Owner must be afforded an opportunity for cross-examination. As a result, there is additional evidence adduced after principal briefing, in the form of deposition testimony. The Patent Owner can get this into the record only by filing a Motion for Observations, which must be a non-argumentative identification of deposition passages and the prior evidence to which they relate. The Petitioner may respond to this motion with an opposition. The reverse situation may arise if the Patent Owner includes new declaration testimony in its Reply in support of a Motion to Amend.
Hence my surpise to find myself often going into an AIA trial hearing without a clear idea of which party would win. I handled ex parte appeals before I did trials, and appeals largely are decided before they are heard. Trials are different. For me, and I think for most of my colleagues, the trial hearing was the first moment in the case in which the parties could gather together all the strands of accumulated evidence and synthesize them into a tight, unitary, coherent story. The reply witness deposition testimony is a part of that. Other evidence, seemingly trivial at first, may have gained importance in view of later-developing evidence. The hearing really is the first opportunity for the Board to examine the entire body of evidence, both macroscopically and microscopically.
The panel members will know the record cold and will begin peppering both sides with questions and requests for evidentiary citations, including some that might not have been the focus of the parties’ briefing. E.g., Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc., IPR2013-00368, Paper 92 (Oral hearing transcript) at 48:19–21 et seq. (requesting pinpoint citations of evidence on an unbriefed claim construction issue). Be prepared to discuss even the deepest, darkest corner of the record in complete detail. The well-prepared advocate will have a reasonable shot at persuading the panel then and there.
Although the burdens and opportunities presented at a CAFC oral argument and a PTAB hearing may differ, the amount of preparation required will not. Consider preparing for the hearing as you would oral arguments, including using mock arguments in front of colleagues and others who may not know the record so well and could thus provide a “fresh pair of eyes.”