1. The Other 66 Percent: Appeals Before the PTAB
Best practices in appeals from ex parte examination, reexaminations, and interferences
Judge Ken Barrett, Lead Administrative Patent Judge, PTAB,
U.S. Patent and Trademark Office,
Judge Michael Kim, Lead Administrative Patent Judge PTAB,
Lissi Mojica, Brooks Kushman
Michael Messinger, Sterne Kessler Goldstein Fox
Moderator: Marc Richards, Brinks Gilson & Lione
Initial Draft - Not For Distribution

2. TOPICS PTAB ex parte Appeals: Operations and Statistics
Do’s and Don’ts on Appeal Briefs
Oral Hearing and Demonstrative Evidence
Appeals Practice: Increase efficiency and effectiveness
Precedential Decisions
Stakeholder Questions and Input

3. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

4. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

5. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

6. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

7. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

8. USPTO – Appeal and Interference Statistics 1/31/2017
Source: USPTO

9. Source: USPTO

10. Practice Tips for Appeal Briefs
Present only the strongest arguments.
Strategically group claims to highlight the strongest arguments in the case.
Develop the facts of your case to show how the law applies to achieve the result being sought.
Understand the burden of proof.
Define key claim terms.
Support arguments with evidence.
Understand the difference between appealable and petitionable issues.
Use Summary of Claimed Subject Matter to support your appeal.
Source: USPTO

11. Practice Tips for Reply Briefs
Use reply briefs to respond to points raised in the Examiner's Answer:
Do not reiterate arguments presented in appeal brief.
Do not raise new arguments in a reply brief that are not responsive to arguments made in the examiner’s answer.
Do not separately argue claims for the first time in a reply brief.
Source: USPTO

12. Practice Tips for Requests for Rehearing
File requests for rehearing only when appropriate
Do not simply re-argue the points raised in the briefs.
Identify particular points of error by the Board.
Strategically limit arguments to only one or two assertions of error, and refer to the specific portions of the Board’s opinion where the errors can be found.
Source: USPTO

13. Appeals – PTAB Decision Process
Source: USPTO

14. Practice Tips for Oral Hearing
Answer the question being asked.
Begin the conversation with the critical issues, not extensive background information.
Consider whether demonstrative exhibits will be useful to your presentation.
Do not avoid the difficult issues.
Ensure that you are familiar with the entire record.
Focus on your substantive arguments.
based on the evidence of record, and
where and how you have relied on that evidence,
rather than arguments about the process that led you to the Board.
Source: USPTO

15. Appeals: Efficiency and Effectiveness
Rationales for Reversal of Prior Art Rejection
Missing Elements/ Technical Differences
Claim Interpretation
Improper Rationale to Combine References
Teaching Away
Intended Purposes/Principles of Operation
Use of Evidence
Technical References
Expert Declarations
Other Suggestions

16. Precedential Opinions
Supreme Court and Federal Circuit Decisions
BPAI/PTAB Precedential Decisions
34 decisions since 1994
BPAI/PTAB Non-precedential decisions
Very specific, fact-based decisions
Not considered persuasive
Need for More PTAB Precedential Decisions?

17. Questions?
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