An Article About the PTAB You Must Read

I’ve written about inter partes review a number of times (e.g., here, here, and here) because it’s an incredibly useful tool for dealing with bad patents. Now, Scott Graham and Lisa Shuchman have done a great piece at on the judges at the Patent Trial and Appeals Board (registration required) that I strongly recommend.

Here’s a taste, but you should read the whole thing:

Though the tribunal has become a critical venue for patent litigation in all industries, its new members and untested authority has also made it a blank slate for clients and practitioners. Now, after roughly three years of PTAB proceedings, lawyers are developing a sense of the judges’ personalities and track records. ALM spoke with more than a dozen PTAB experts and compiled data from the analytics website Docket Alarm to glean an insider’s view of the new forum.

Practitioners describe an engaged bench populated by lawyer-scientists eager to drill down into the nitty-gritty of inventions and the art that preceded it. “You can’t wave your hand, gloss over weaknesses in a case and assume they won’t catch them. They will,” says Erika Arner, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner who filed the first ever PTAB petition in 2012 and has been involved in dozens since.

“They’re going to ask the kinds of questions that make you feel like the witness that’s being deposed,” says Robert Steinberg, chairman of Latham & Watkins’ PTAB practice.

It can be unpredictable, too, as might be expected of a board developing rules and precedents almost from scratch. Oblon partner Scott McKeown was awestruck when two PTAB judges with electrical engineering degrees began examining an inventor about his computer code. “In district court, you never would see a judge asking to be walked through code, line by line,” says McKeown.

Kamholz strongly encourages practitioners to hold moot courts before appearing. “Sometimes we were relentless,” he says. “It’s one of the hottest benches going.”