PTAB Strategies and Insights - September 2021: Observations from the September 17, 2021, LEAP Arguments and Bench Discussion

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Patent Trial and Appeal Board (PTAB) and AIPLA’s PTAB Trial Subcommittee continue to strengthen the Legal Experience and Advancement Program (LEAP), in which the PTAB incentivizes parties to allow junior practitioners (three or less arguments in any tribunal and seven or less years as licensed attorney or agent) to participate in oral arguments in exchange for an extra 15 minutes of oral argument time. As a defining feature of the initiative, junior practitioners may argue a small, discrete issue, sharing the overall argument time with senior attorneys, who may even correct or supplement the discussion if needed. In this way, the PTAB goes beyond what many courts already do in commending parties that give junior practitioners speaking opportunities.

What parties may not realize is that the LEAP initiative also offers young practitioners a “boot camp” educational course, including a mock inter partes review (IPR), lectures, and a moot demonstration. The most recent program featured keynote remarks from Sterne Kessler Director Sal Bezos, Vice Chair of the AIPLA PTAB Trial Subcommittee, and a moot argument in which participants in the program could observe leading practitioners and PTAB judges mooting the same mock IPR that the participants studied.

On September 17, 2021, I was honored to be featured as one of the experienced practitioners for LEAP participants to observe. I presented an argument before a panel of active Administrative Patent Judges (APJs), alongside other leading PTAB practitioners. Following the argument, the PTAB judges provided feedback on the presentations, providing all attendees valuable insight into the mind of a PTAB judge.

The panel’s stylistic tips for oral hearings emphasized the importance of approaching oral argument as a conversation rather than a performance. Both in style and in substance, listening and relating to the judge’s concerns and grappling with issues together is far more effective than strident campaigning. Clear and direct responses, even if uncomfortable, get better results than merely staying on message.

While it should come as no surprise to experienced practitioners, the Board noted that gimmicks, theatrics, and other techniques that might work in jury trials are not well-received among PTAB judges. Similarly, while glossing over technical details in favor of clever legal analysis might play well to the Federal Circuit, the PTAB is more focused on weighing the facts and examining the record in detail. An advocate with command of all the relevant citations can help bring a winning brief across the finish line. Arguing before the PTAB is thus very much its own skillset, though the stand-up speaking opportunities that the LEAP initiative affords young practitioners provide a good foundation for all oral advocacy, both before the patent office and other tribunals.

Sterne Kessler remains dedicated to the professional development of its next generation of attorneys, as well as the advancement of the PTAB bar in general by not only encouraging its own young attorneys to participate in the program, but also contributing to various symposia and legal education programs associated with the LEAP program, like those that took place this past month.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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