At the Patent Trial and Appeal Board (PTAB), the entire proceeding is referred to as a “trial,” but there is typically a single live proceeding that is referred to as the oral hearing. During the hearing, each side has a limited amount of time to present their arguments to the PTAB judges; it’s typically about an hour per side, which means attorneys must use the hour wisely.
When clients hear about the PTAB proceedings as being trials they tend to imagine a sort of Perry Mason courtroom-style experience that is similar to the process that takes place in district court litigation. Instead, PTAB oral hearings involve an intense probing of technical and legal issues by a very active three-judge panel. For that reason, considerable planning is required to make sure that each argument before the judges is effective. It’s oftentimes beneficial to have multiple lawyers argue at the PTAB oral hearing, especially because it’s important to ensure the oral argument transcript is complete. For example, in certain situations an attorney may be confronted with a question that relates to a specific aspect of the case, and it’s perfectly acceptable important for the arguing attorney with the strongest knowledge to respond to the question before the PTAB.
At Ropes & Gray we carefully strategize from the outset about the full range of issues that could arise in a PTAB matter, especially those that have a likelihood of recurring throughout the proceeding. Oral arguments before the PTAB require a great deal of preparation and are a key focal point of the entire case.