Fish Principals W. Karl Renner and Roberto Devoto were quoted in the Law360 Article “5 Must-Have Skills To Shine At The PTAB” to discuss the America Invents Act reviews and the special breed of patent proceedings.
Attorneys who tend to succeed at the PTAB are those who have both the technical chops necessary to do well in the prosecution setting and the advocacy skills that are critical for litigation, according to W. Karl Renner, co-chair of Fish & Richardson PC’s post-grant practice.
“The people who excel in this tend to have a strategic approach, where they are able to think of the big picture and can build to the final story,” he said. “They also have to know the record and the technology. Often at the district court, and even at the International Trade Commission, so many times the details of the technology can get swept up and marginalized as one component of a broader fight. Here, at the PTAB, they are front and center.”
Telling an emotional story where one side is the hero and the other side is the villain often pays less dividends at the PTAB and risks alienating the judges, according to Roberto Devoto, a principal at Fish & Richardson.
“The judges have an ear and appetite for the technical arguments, and the other fluff that is put around the issue of whether an innovation is new has less bite and effect,” he said. “The judges are looking for what the technically correct answer is and are focusing on that, not on who has the nice, heart-pulling story or who seems like a nicer, humbler, more down-to-earth guy.”
“Lawyers who have the technical facility and really enjoy the technology are those who are best suited for this forum,” Devoto said.
Whether seeking to invalidate or defend a patent before the PTAB, lawyers must have a finely honed ability to critically review the application of prior art on the patent claims, according to Devoto.
“The reason this skill is uniquely important to PTAB reviews is because of the unforgiving nature of the proceedings,” he said. “You only have very few opportunities to advance your arguments, and after laying out your case in chief, your ability to modify, pivot and add arguments is severely limited.”
The strict time limits of the proceeding make it all the more crucial for lawyers to identify in advance all of their arguments and their opposing side’s counterarguments to ensure they are putting their best foot forward with the initial filing, he said.
“Lawyers need to consider claims and prior art from all angles ahead of time to minimize the likelihood of surprises,” he said.
Petitioner attorneys who focus on the quantity of their arguments over the quality could see their case fall prey to the PTAB’s redundancy doctrine, a time-saving tool the board uses to encourage lawyers to advance arguments based on the best pieces of prior art, according to Devoto.
“Multiple pieces of prior art can hurt you, as it can invite the PTAB to choose on its own initiative which pieces of prior art should go forward,” he said. “If you advance a whole bunch of grounds of claim rejections and fail to explain why they aren’t redundant to each other, the PTAB will pick and choose arguments based on its own selection criteria, and it may institute a trial on one of your weaker grounds.”