Bad Counsel, Bad Strategies, or Both?

We are now a full decade into PTAB practice. Yet, many Patent Owners still continue to shoot themselves in the foot when it comes to litigating at the PTAB. When representing a Petitioner, I don’t think I have ever been involved in a case where the Patent Owner hasn’t overlooked its best argument in some respect, or buried it in a heap of weak and/or “dead on arrival” arguments that provide no value aside from undermining the PO’s credibility.

Why is that?

I think there are a number of factors driving this behavior.

  1. Wrong Playbook

First, Patent Owners (NPE’s especially) increasingly rely on litigation trial counsel for PTAB representation. Perhaps as a consequence of their representation agreement (usually, contingency), or maybe to create perceived efficiencies, or because they simply believe that one size fits all. Because of this, and logically so, these plaintiff attorneys tend to rely on the same winning strategies that have brought them success in past district court invalidity disputes.

For example:

  • Teaching Away
  • Non-analogous art
  • Level of Skill in the Art
  • Evidentiary issues
  • Flowery presentations on the Invention

These arguments are largely a waste of time at the PTAB. That is not to say that there isn’t an occasional case where such an argument is highly relevant, just that, on average you will get far less mileage on these arguments at the PTAB. The reason for this is the technically-trained judges.

PTAB judges understand that a true teaching away is rarely present (e.g., You should never do X). yet, I see this argument in about 80% of Patent Owner filings. It is almost always dead-on-arrival, and undermines the PO’s credibility. Non-analogous art is another such argument, although less common than teaching away. But, also a relatively uncommon fact pattern.

Patent Owners will also spend hours in a deposition hoping to show that the technical background of its expert is somehow superior to that of the Petitioner’s. In the predictable arts, rarely is this a fruitful endeavor. The level of skill is typically readily apparent from the prior art references. That your expert may be slightly more impressive is not going to win the day if your technical arguments are presented ineffectively. (Note: this argument may be more effective in niche technologies, or the unpredictable arts).

As to evidentiary issues, objections to evidence only invite more evidence in the form of responsive, supplemental evidence. As such, most objections (files because – that’s what attorneys do – in a majority of cases) are a disservice to the client; especially when you consider that Motions to Exclude are successful less than 10% of the time.

And finally spending the first 10-15 pages of your brief attempting to explain the invention in terms of a human interest story, or revolutionizing technical aspects that you haven’t claimed tells a Petitioner, and the PTAB, that you have nothing meaningful to argue as to the merits. The same holds true for obsequious presentation styles and exchanges with the PTAB judges.

2. Ignoring Your Audience

As mentioned above PTAB judges are engineers and scientists. Arguing that “up” is actually “down,” because your expert says so is not a recipe for success. If YOU (the person arguing) can’t explain the technology at the oral hearing in a way that supports your case, and is technically coherent, you will lose.

The types of technical arguments that may be perfectly viable in front of a generalist audience of the district court, will lose you credibility at the PTAB. It is mind boggling to me how many times PO’s counsel will stand up before the PTAB and make an argument that everyone in the room knows is technically ridiculous – except, seemingly, the person arguing.

The same holds true when arguing the references individually when combined in the trial ground, or arguing for bodily incorporation. You are not going to fool a Board that spends 90% of its time on obviousness determinations!

At bottom, most district court litigators can count on one hand the number of cases they have lost to invalidity based on obviousness. Whereas the PTAB deals primarily with obviousness. This is not an ideal match of skill sets – think about it.

3. Refusing to Adapt

When being represented by an attorney that makes the above mistakes, it is easy for a PO to fall into the trap of “the gov’t stole my patent….the PTAB is corrupt, or they’re a patent death squad!!” This is because, from the perspective of your trial attorney — that may have never lost a patent to obviousness in a district court — suddenly losing on obviousness, using the same winning strategies, seems abnormal.

But, as pointed out above the judges are different, and the unpatentability standards are that of patent prosecution, not patent litigation. The idea is to determine whether the patent was correctly issued based upon new information/issues. That is, the question litigated at the PTAB is whether the patent would have been issued in its present scope had such information been available to the patent examiner. This is not the same question litigated in the district court. In that respect, it should not be surprising that the answers diverge on a given patent.

When you are litigating at the PTAB – especially when representing POs – you need to think/argue in terms of patent prosecution strategies that account for your clients litigation positions. The vast majority of POs refuse to accept this reality. Instead, POs continue to operate as if they are in the district court, and then complain that the PTAB has done them wrong.

It is time Patent Owners started switching playbooks.