BOARD OF PATENT APPEALS AND INTERFERENCES Oral Hearing Administrative Patent Judge Michael R. Fleming

Oral Hearings What you need to know about your audience How to prepare for an Oral Hearings How to Present an Oral Hearing

Know your Audience What is the Composition and Duties of the Board Who are the Board members How does the panel make a decision

Overview of the Appellate Review Process Patentable Invention Patent Examiners Patent Rejection Board of Patent Appeals & Interferences Reversed Affirmed U.S. Court of Appeals for the Federal Circuit Appeal U.S. District Court for the District of Columbia U.S. Supreme Court

Composition and duties: 35 U.S.C. §6 The Director, the Commissioner for Patents, the Commissioner for Trademarks and Administrative Patent Judges shall constitute the Board of Patent Appeals and Interferences per 35 U.S.C. § 7(b), the Board shall, "on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences” each appeal and interference is heard by at least 3 members of the Board 2

Who are the Administrative Patent Judges Each Judge has a Juris Doctor degree from an accredited law school and has been admitted to at least one state bar Each Judge has a bachelor of science degree in chemistry, biology, physics or engineering Many Judges have advanced degrees in science and engineering Our scientific ability is an important factor in how we decide Appeals 3

What we do a Judge is responsible for making decisions in many diverse technical fields We do not hold ourselves out to be skilled artisans Our technical background and our experience in learning about technology aids us in our decision making process 9

How do we make a decision First, a Judge uses his/her scientific ability A Judge must become a student and learn about the Appellant’s invention and prior art of record After this scientific education process, a Judge proceeds to make the legal determination 10

How do we make decisions The Board has developed a process which facilitates this scientific education process The lead judge initiates the process The lead judge then meets with the panel and the panel studies the Appellant’s specification and the prior art to obtain an understanding of the technology involved Only after the panel is satisfied that a scientific understanding has been obtained does the panel proceed to the legal determination of the decision making process 11

Know your audience Judges have scientific ability Judges are responsible for deciding appeals in diverse technical areas One key aspect of the panel decision making process is for the panel to acquire the needed scientific knowledge Good appellate practice facilitates this scientific education process 12

Oral Hearing Preparations Presentation Questions

Oral Hearing Overall objective is to: Explain Appellant’s disclosed invention Show how the claims cover the disclosed invention Show how the claims distinguish over the prior art

Oral Hearing Preparations Preparation, Preparation and Preparation Remember the panel has thoroughly read and discussed the case before the hearing You only have 20 minutes 14

Oral Hearing Preparations Identify your best argument in the brief Do not attempt to discuss every argument in the brief Highlight the portions of the specification and the claim language that support your best argument Identify the portions of the prior art that support your argument that the claim language distinguishes over the prior art 16

Oral Hearing Preparations Identify the weakness of your case Be prepared to address this weakness directly Remember that a statement such as “I did not draft this claim” does not make a particularly persuasive argument Be sure you are making arguments that are made in the brief

Oral Hearing Preparations Organize your presentation 1. Appellant’s distinguishing feature as disclosed 2. Appellant’s distinguishing claim limitations 3. Prior art features and how they do not meet the claim limitations 4. Be prepare to be able to point to where in your brief that your oral arguments were made 2 17

Oral Hearing Preparations Visual Aids 1. Determine if they are needed 2. Even if they are needed, use only a small number 3. Visual Aids must be large enough for the Judges to see them 4. Make sure that the Visual Aids serve in meeting the objectives 3 18

Oral Hearing Presentation BE ON TIME

Oral Hearing Presentation View yourself as an Educator Avoid overt emotions - you are not arguing before a jury Use conversational tones - remember you are only speaking before three people. Speak clearly and audibly Avoid speaking too quickly 4 19

Oral Hearing Presentation Avoid any appearance of arrogance Avoid any nervous habit that might be distracting Be prepared for interruptions View the interruption as an opportunity 5 20

Questions Be prepared Do not view the Judge who is asking the question as an adversary to your appeal Do not deny the undeniable - you only lose credibility 6 21

Sources of possible Questions Scope of the Claim Prior art teachings Appellant’s specification Remand Rule 196(b) actions 7 22

Client attendance Your Client is welcome Always introduce your Client at the beginning of your presentation Counsel your Client not to interrupt or interject comments 8 23

Conclusion Be sure that you have a compelling reason to request an oral hearing Be prepared to answer questions about the prior art and Appellant’s claims and specification Remember that you have a limited amount of time Relax and present your case in conversational tones. 9 24