Best Practices and Tips for Winning at the PTAB

Best Practices and Tips for Winning at the PTAB

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The differences between PTAB and district court proceedings are many. Unlike most district court judges, the Administrative Patent Judges (APJs) consist of technically savvy engineers and scientists. As a result, what works in district court or on appeal to the Federal Circuit does not necessarily work while appearing at the PTAB.

In district court, for example, successful attorneys often create a narrative which paints their client as the “good guy” and the opponent as the villain. While this strategy of painting a picture that can often connect with judges and juries on an emotional level it is usually unsuccessful at the PTAB. Other common missteps include poor utilization of expert declarations, including the failure to set forth underlying facts which result in experts being given little or no weight.

This panel will discuss best practices and tips for winning at the PTAB, including the framing of arguments, selection of experts, how best to use experts and declaration, formulation of expert reports, and more.

Materials

Amgen Analysis: An Emerging PTAB Threat For Bio/Pharma

Early Opportunity for PTAB Patent Owners – Expectation of Success

Why Do Patent Owners Keep Making the Same PTAB Mistakes?

A PTAB Declaration is Not an Expert Report

Using the Same Expert at the PTAB & District Court?