PTAB Oral Argument

PTAB oral argument follows a structured procedure with specific rules under 37 C.F.R. § 42.70: REQUESTING ORAL ARGUMENT: oral argument is NOT automatic — it must be REQUESTED; for IPR proceedings, the petitioner or patent owner may request oral argument in a MOTION filed no later than the filing of the petitioner's reply or patent owner's sur-reply (whichever is later); if the PTAB grants the request, it will schedule the argument; the PTAB may also ORDER oral argument on its own initiative when it believes argument would be helpful; FORMAT: TIME ALLOCATION: each side typically receives 20 MINUTES of total argument time; the PTAB may adjust time allocations in complex cases or for multiple patents/proceedings; PETITIONER GOES FIRST: the petitioner argues first, followed by the patent owner; REBUTTAL: the petitioner may reserve a portion of their 20 minutes for rebuttal (typically 5 minutes); this rebuttal must be reserved upfront at the start of oral argument; PANEL COMPOSITION: oral argument is heard before the same panel of THREE Administrative Patent Judges (APJs) who will decide the case; typically the lead judge opens the argument and facilitates; all three APJs may ask questions; LOCATION AND FORMAT: arguments may be held: at USPTO headquarters in Alexandria, Virginia; by video teleconference (common post-COVID); less frequently, at the Federal Circuit courthouse or other locations; EXHIBITS AND DEMONSTRATIVES: parties may file demonstrative exhibits (slides) BEFORE the oral argument; the PTAB rules require demonstratives to be filed with the opposing party by a set time before the argument (typically 7 days prior); demonstratives CANNOT contain new arguments or evidence not already in the record; RECORDING: oral argument is transcribed and the transcript becomes part of the record; arguments are sometimes audio/video recorded; NO LIVE WITNESSES: there are no live witnesses at oral argument (witnesses testify by deposition in PTAB proceedings, not live).

PTAB oral argument is strictly limited to issues already in the briefing record: THE NO-NEW-ARGUMENT RULE: 37 C.F.R. § 42.70(b): 'At the oral argument, a party may only present arguments relied upon in the papers previously submitted'; this is a hard rule — attempting to introduce new arguments is typically met with immediate interruption from the panel; NEW ARGUMENT DEFINED: parties CANNOT: introduce a new ground of unpatentability not in the petition (for petitioner); raise a claim construction argument not advanced in the written briefing; cite a prior art reference not included in the instituted grounds; introduce new experimental data not already in the record; argue that a new combination of references renders the claims obvious if that combination was not in the petition; WHAT IS PERMITTED AT ORAL ARGUMENT: synthesizing and emphasizing arguments already in the papers; responding to arguments raised in the opposing party's briefing; clarifying or reinforcing the key distinctions between competing claim constructions; directing the panel's attention to specific portions of the prior art, declaration testimony, or specification; correcting mischaracterizations of the record made in the opposing party's papers; DEMONSTRATIVE SLIDES: slides must ONLY reference evidence already in the record; a slide that summarizes an expert declaration argument is permissible; a slide that introduces a new side-by-side comparison not already in the briefing is typically challenged; THE PANEL'S ROLE: the panel often interrupts to refocus argument on specific record citations; if a party makes an argument that appears to be new, an APJ will typically say 'where is that in your papers?'; the inability to point to a specific page in the record is a strong signal the argument is new (and impermissible); ESTOPPEL CONSIDERATIONS: unlike some other contexts, PTAB oral argument does not create additional estoppel beyond what the petition and briefing create; however, CONCESSIONS made at oral argument can be used against the conceding party in the FWD and on appeal.

Effective PTAB oral argument preparation requires specific record mastery and strategic planning: UNIVERSAL PREPARATION — FOR BOTH SIDES: (1) MASTER THE RECORD: oral argument at PTAB is won on the record; know every claim construction argument in the briefing and where each supporting citation appears; know every prior art reference by exhibit number (EX1001, EX1002, etc.); know key deposition transcript cites for both your expert and theirs; know the patent specification page and column numbers for key disclosures; (2) ANTICIPATE PANEL QUESTIONS: APJs have read the papers thoroughly before argument; they typically ask about the WEAKEST spots in your position; prepare honest, direct answers to the hardest questions; an evasive answer to a direct APJ question is worse than a concise acknowledgment of a weakness; (3) PRACTICE WITH INTERRUPTIONS: oral argument at PTAB is far more interactive than appellate argument at the Federal Circuit; APJs interrupt constantly; practice with a colleague acting as an aggressive questioner; your prepared remarks should be your secondary priority; answering questions directly is the primary task; (4) PREPARE A FLEXIBLE OUTLINE, NOT A SCRIPT: prepare the 3-4 most important points in priority order; be ready to abandon points if time runs out; the panel has already read the papers — they do not need you to recite them; PETITIONER-SPECIFIC PREPARATION: structure your argument: claim construction first (if disputed) → most decisive prior art ground → strongest obviousness motivation; reserve 4-5 minutes for rebuttal; during rebuttal, address ONLY the most important points patent owner made; PATENT OWNER-SPECIFIC PREPARATION: patent owner typically argues SECOND; you know what petitioner said at the time you argue; prioritize: best claim construction argument → why petitioner's mapping is wrong → secondary considerations evidence (if any); consider whether to split time between claim construction and substantive invalidity; DEMONSTRATIVE SLIDES: simple, uncluttered slides work best; one key claim construction comparison; one side-by-side of the claim limitation vs. the prior art disclosure; cite exhibit numbers prominently.

Understanding how APJs approach oral argument can help counsel focus their preparation: PTAB PANELS HAVE ALREADY READ EVERYTHING: by the time oral argument occurs, the APJ panel has read: the petition; the patent owner response; the petitioner's reply; all expert declarations and all deposition transcripts; all prior art exhibits; the patent and prosecution history; oral argument is NOT the first time the panel encounters the arguments; APJ QUESTIONS REVEAL THEIR THINKING: when APJs ask repeated, pointed questions about one issue, that issue is typically a contested or unclear point in the case; when APJs ask no questions about an issue, they have likely already resolved it; carefully tracking which issues the panel probes can signal where they have doubt; CONSENSUS vs. DISAGREEMENT SIGNALS: when all three APJs are silent on an issue, it may mean they all agree on it (though not necessarily agreeing with you); when one APJ asks aggressive questions while others are silent, the case may be divided; watch for subtle signs of agreement or disagreement among the panel; COMMON PATTERNS IN APJ QUESTIONING: CLAIM CONSTRUCTION: 'Where does the specification distinguish A from B?'; 'How would a POSITA read this term in light of column 5?'; PRIOR ART MAPPING: 'Where exactly in Exhibit X does petitioner say this element is disclosed?'; 'What is the petitioner's response to the patent owner's argument on column 6?'; MOTIVATION TO COMBINE: 'Why would a POSITA combine reference X with reference Y?'; 'Where does the petition address the teaching-away argument?'; EXPERT CREDIBILITY: 'Your expert was cross-examined on this point — what do you say about the deposition at page 47?'; HOW PTAB USES THE ARGUMENT TRANSCRIPT: the FWD may cite oral argument transcript to explain a party's position or concession; notable concessions at oral argument can appear in the FWD.

Avoiding common mistakes can prevent an otherwise strong case from being undermined at argument: MISTAKE 1 — IGNORING APJ QUESTIONS TO FINISH PREPARED REMARKS: the most critical mistake; when an APJ asks a question and counsel says 'I'll get to that — let me just finish this point first,' the panel loses confidence; APJ questions ARE the argument; address them immediately, then briefly circle back if needed; MISTAKE 2 — ARGUING THINGS NOT IN THE PAPERS: any argument that a panel member cannot immediately locate in the briefing undermines credibility; if you cannot point to the exact page where an argument appears in your papers, you should not be making that argument; MISTAKE 3 — MISIDENTIFYING EXHIBITS: exhibit numbers matter; confusing EX1003 with EX1004 is a credibility problem; know your exhibit list cold; MISTAKE 4 — FAILING TO ADDRESS THE OPPOSING PARTY'S STRONGEST ARGUMENT: the panel has read the opposition papers; they expect you to address the opposing party's strongest point directly; avoiding it signals weakness; MISTAKE 5 — CONCEDING TOO MUCH: in attempting to be reasonable, counsel sometimes concede points they did not need to; unintended concessions can appear in the FWD; be accurate but do not volunteer concessions; MISTAKE 6 — OVER-RELYING ON SLIDES: slides are aids, not arguments; when the panel ignores your slides and asks direct questions, abandon the slides immediately; MISTAKE 7 — SPENDING REBUTTAL TIME ON MINOR POINTS: the petitioner's rebuttal should be reserved for the one or two most important points that patent owner raised; using rebuttal time on minor procedural points or restating your main argument is wasted time; MISTAKE 8 — NOT KNOWING THE PRIOR ART AT THE EXHIBIT LEVEL: when asked 'where does Exhibit 1003 disclose this element?', you must be able to point to the specific page, figure, or column; MISTAKE 9 — LOSING COMPOSURE UNDER HOSTILE QUESTIONING: a hostile question is a teaching moment, not an attack; answer calmly, accurately, and directly.