I went to a CLE class tonight and learned a few things about Patent Trial and Appeal Board (PTAB) procedures, mostly about inter partes review (IPR).
IPR is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a registered patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
IPR is initiated by a petitioner (not a patent owner) either 9 months after grant/issue of patent or after post grant review, whichever is later. The petitioner has the burden of showing whether he or she has a reasonable likelihood of prevailing with respect to at least one claim challenged. IPR lasts for about a year.
If you know how to litigate, IPR should not be too difficult to handle. But PTAB procedures differ from traditional trial procedures. Here are some pointers discussed this evening:
1. You can make substantive objections during deposition in a PTAB proceeding. I'm talking one word objections like "misleading," "speculation," "foundation," and others you can't normally bring up during deposition. Making objections can preserve the record for appeal.
2. If you settle right before your oral hearing is scheduled, the PTAB can still proceed and provide a Final Written Decision.
3. If you settle after your oral hearing, the PTAB can still proceed and provide a Final Written Decision.
4. You can have a trial before the PTAB and before a district court at the same time.
5. District judges are interested in what happens during the first 6 months of a PTAB proceeding, usually to decide whether they should stay the case.
6. PTAB proceedings last 12 months. The last 4 months are usually used to prepare the Final Written Decision.
7. USPTO is hiring Administrative Patent Judges and lots of them. About 4 every month... and it's expected to be that way for the next year or so.
8. Cite, and cite correctly. Administrative Patent Judges don't have clerks, so if you make a mistake, the judges will be the ones to find out first.
9. Expert declarations are super helpful. Try to include it and make it understandable.
10. Conduct good searches. Cast a wide net and start searching early.
11. Patent owner preliminary response is not necessary. You might want to hold off on it if the petition is not focused because your response may help the opposing side focus the petition. On the other hand, if the petition is super focused, then respond to each of the points to frame your arguments. Also, preliminary response would be a good place to raise any procedural objections.