Law360’s “AIA Survival Guide”

Eldora Ellison, Ph.D., is quoted in each of the articles that comprise Law360’s four-part series entitled “AIA Survival.” The four articles reveal the tips and pitfalls of presenting petitions to the Patent Trial and Appeal Board (PTAB). In part one of the series, “Tips For PTAB Success” Law360 reviews the America Invents Act (AIA) review system becoming available online for the first time just three years ago. Under the new AIA system, challenges to patents can be resolved in 18 months opposed to many years. To date, the PTAB has received over 3,600 petitions and completed over 500 trials. In commenting on the PTAB appeals process, Dr. Ellison said, “A lot of us expected the proceedings to be used substantially, but I don’t think anyone expected them to be used as much as they have been used.”

The second installation, “Preparing An Airtight Petition” is geared toward petitioners and focuses what they should know when preparing to challenge a patent before the Board. One challenge presented when creating an impermeable petition is finding an expert who is viewed by the PTAB as credible during cross-examination and offers a coherent testimony. “As everyone knows, patent law can be exceeding complex, particularly when it involves fairly arcane technology. But an effective AIA petition is one that makes the arguments understandable and relatively simple,” said Dr. Ellison. She continued to state, “Even though the judges all have a technical background, you have to strike the right balance and give them enough detail without overburdening them.”

The third installation of the series, “Crafting A Killer Response” focuses on the patent owner’s response to the petition, and the final installation identifies how patent owners can make a compelling argument before the PTAB. After receiving a challenge to a petition, patent owners have only two chances to show the references of the petitioner are invalid and don’t qualify as prior art, which as stated by Dr. Ellison is “a nice, simple clear-cut issue that can lead to success for the patent owner.” Dr. Ellison continued to comment on the arduous nature of the work it takes to identify procedural problems that could end an AIA review early. “[T]he patent owner definitely wants to go over the petition with a fine-tooth comb,” she added.

In the final segment of the article series, “Making A Stellar Argument” discusses how litigators can make compelling arguments that will influence the judges’ decisions. Unlike district court judges, PTAB members have expertise in both patent law and the field of technology at issue. For this reason, litigators must have a thorough understanding of all the details involved when presenting their argument. “You should be prepared to answer just about anything, including the nitty-gritty technical details,” said Dr. Ellison. “The judges can ask very detailed questions, and if the attorney standing at the podium is really not prepared to answer or didn’t understand the case or the technology that well, I think that’s a mistake.”

Litigators should also be ready to give concise responses to the judges’ questions, not wasting any time on superfluous information not related to the technological subject matter at hand. “One mistake that litigants before the PTAB sometimes make is selecting an attorney to handle the hearing who may skilled at arguing before judges, but who doesn’t have a deep background in the technology at issue,” she continued. “Given what judges are interested in hearing about, that can damages your case.”