WIPR webinar: Don’t throw kitchen sink at PTAB, warns judge

Parties at the Patent and Trial Appeal Board (PTAB) should focus on dispositive issues rather than throwing “the kitchen sink” at the board, a judge has warned.

Kristi Sawert, an administrative patent judge at the PTAB, said this approach has been taken towards patent examiners, but warned against adopting it at the board.

Speaking in a personal capacity, she added that she doesn’t have “any interest in making a case” for the parties.

Sawert led a discussion on how to more effectively present a PTAB case during a WIPR webinar, co-presented with law firm Birch Stewart Kolasch Birch (BSKB), which took place yesterday, October 13.

“For ex parte practitioners, remember you’re not doing the prosecution and you’re not before an examiner. I would say very emphatically that administrative patent judges are not examiners and they don’t want to be examiners.”

Petitioners need to come prepared with all the evidence to make their case, ideally with a very strong petition and expert declaration, she said.

They have only “two shots” to make their case, she said, adding that the burden of persuasion is always on the petitioner but the patent owner can also help itself by having a very strong declaration.

This makes up for any deficiencies that the board may have identified in the decision to institute the case, Sawert explained.

She added that the PTAB gets a lot of fairly negative press about motions to amend patent claims, and that patent owners really only have “one shot by statute” to amend claims.

Sawert advised patentees to “go all in on your motion to amend” and make sure that if they are trying to alter claims, they do exclude the prior art.

A lot of claims Sawert has seen fail have done so because the patent owner tried to put in language that was not supported with the specification.

She said: “I would stick closely to what’s supported by the specification and try to, very clearly, narrow my claims to avoid the prior art.”

Gerald Murphy, partner at BSKB and a panellist in the webinar, outlined the case of Merck v Gnosis. The US Supreme Court recently rejected certiorari in this case.

In this case, the petitioner’s expert submitted a short declaration of 12 pages.

Murphy explained that filing a short declaration can be effective, but questioned whether petitioners should take such an approach because “this is the only chance for a party to say what you want to say”.

“There may be rebuttal arguments brought up by the patent owner and the question becomes ‘should you have covered this in your petition or should [you] hold back and wait to argue that only if it’s raised by the patent owner?’,” he said.

Eugene Perez, a partner at BSKB and another panellist,discussed Phigenix v Immunogen, which was decided in favour of the patent owner.

According to Perez, the PTAB had been persuaded by the patent owner’s evidence which showed that preparing any antibody-toxin immunoconjugate was “difficult and unpredictable”.

There was substantial evidence of secondary considerations during the obviousness analysis on dependent claims, including unexpected results, fulfilling long-felt and unmet need, praise in the field and commercial success.

“Basically, in this case, the patent owner had better evidence,” he said.

You can listen to the webinar here.