Oral Hearings at the PTAB: What to Expect

Much like discovery, oral hearings before the Patent Trial and Appeal Board ("PTAB") share some similarities with federal district court litigation, but they also include important differences. The rules governing PTAB hearings are laid out in regulations[1] and a Trial Practice Guide[2] promulgated by the U.S. Patent and Trademark Office ("USPTO"). Hearings are ordinarily handled by a three-judge panel of administrative law judges, who often have experience in the subject matter of the patent at issue in the proceeding. Unlike district court trials, which revolve around questioning witnesses, PTAB hearings rarely include live testimony. Instead, these hearings more closely resemble appellate hearings, in which the panel questions the parties' attorneys directly on aspects of the factual record established before the hearing.

How Many PTAB Judges will be at the Hearing?

By statute, a PTAB panel must comprise at least three judges.[3] The panel is selected by the Chief Judge from a pool of over 100 judges, ordinarily matching the technical expertise of the judge with the patent under review.

When are Hearing Logistics Decided?

The date and location of a PTAB hearing will be listed in the Scheduling Order issued by the Board (usually concurrently with institution). The Scheduling Order also specifies the due date for the parties to request an oral hearing. In response to this request, the Board issues an Oral Hearing Order setting a time and room for the oral hearing. A list of scheduled oral hearings is available on the USPTO website. The Oral Hearing Order also provides due dates for various hearing-specific items, such as the exchange of demonstrative exhibits by the parties, objections to the demonstrative exhibits, and requests for special presentation equipment. Note that even though a date for the hearing is set by the Scheduling Order, no hearing will take place unless at least one party submits a timely request for an oral hearing.

Where Will the Hearing Take Place?

The majority of PTAB hearings take place at the USPTO's headquarters in Alexandria (VA). Satellite offices in Detroit (MI), Dallas (TX), Denver (CO), and San Jose (CA), are also equipped with a dedicated hearing room where parties and judges can conduct remote hearings via videoconference. If one or more of the judges on the panel is located near one of the satellite offices, requests by one or both of the parties to hold the oral hearing at that satellite office will often be considered by the Board. In addition, the PTAB has recently been conducting hearings entirely over videoconference due to the coronavirus-related shutdown.

Who Can Attend the Hearing?

Members of the public are generally welcome to attend a PTAB hearing, including remotely from one of the USPTO's satellite offices. But an individual or party must first arrange with the USPTO, in advance, for a remote viewing. This arrangement is beneficial for inventors, in-house counsel, and corporate officers who may wish to attend the proceedings without traveling to Alexandria. Attendance of oral hearings can also be beneficial to younger practitioners (even those with no connection to the case) interested in learning the specifics of post-grant practice by witnessing practitioners in action. Some hearings, however, may be closed to the public if confidential information will be disclosed.

How Much Time Will I Have for My Argument?

Generally, the Board will provide each party with one hour to present, and allows each party to reserve up to half of their time for rebuttal. The Board may increase or decrease the time allotted to each party depending on the circumstances of the case (e.g., the technical nature of the patent's subject matter, the number of claims involved, the breadth of prior art). The PTAB encourages parties to meet and confer to determine how long each side requires for oral argument and specify the amount of time needed in the request for oral hearing.

Can I Use Demonstratives?

Yes! Trials at the PTAB necessarily deal with highly technical subject matter, and demonstrative exhibits can be invaluable in explaining complex technical topics. All hearing rooms are equipped with a projector for presenting slides from a laptop, and, if requested in advance, easels and document projectors (ELMOs). Each party generally must serve their demonstratives on the opposing party at least seven business days prior to the hearing, although the Board can modify this deadline. Objections to demonstratives by the parties are ordinarily provided to the Board after the parties have met and conferred and are resolved at a conference a few days before the hearing. The hearing rooms generally do not provide Internet access, so demonstrative exhibits should be stored locally on a computer or flash drive prior to the hearing. Demonstratives are not evidence, and must be clearly labeled to indicate this fact. In addition, new arguments, "re-briefing" of prior arguments, and reproduction of portions of the record that are not cited in any paper are not permitted in the demonstrative exhibits.

Will there be Live Testimony?

Unlike trials in federal district courts, PTAB hearings rarely include live testimony. Parties must request the use of live testimony in advance, and the Board is more likely to grant such a request where the demeanor of a witness is critical to evaluating witness credibility. Also, the PTAB judges may ask questions directly to the witness during the oral hearing.

More questions? Contact the authors or visitFish's Intellectual Property Law Essentials.

[1] 37 C.F.R. 42.

[2] https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL= (last updated Nov. 2019).

[3] 35 U.S.C. 6(c).

Authors: Rick Bisenius, Dan Smith, and Ryan Petty