Speaker 1  0:00  
Good afternoon and welcome to today's webinar insights into the two most popular types of pte AB proceedings presented by Autumn. My name is Samantha Spiegel, autumns professional development manager and I will be your staff host for today. All lines have been muted to ensure high quality audio and today's session is being recorded. If you have a question for our panelists, we encourage you to use the q&a feature on your zoom toolbar. If you have technical questions or comments, please feel free to use the chat. Should you need closed captioning during today's session, the Zoom closed captioning feature will be turned on and available on your toolbar and just a moment. Before we begin, I would like to take a moment to acknowledge and thank autumns online professional development sponsors, Marcia girls, Gerstein, IP and the Michelson Institute for intellectual property. We appreciate your ongoing support. I now have the pleasure of introducing you to today's distinguished speakers. Joe Piccolo is a partner at Davidson, berchmans, Jackson and Gaudi Joe received his BSC from the University of Notre Dame and a JD from New York University. After law school, Joe clerked for the Federal Circuit Judge Allen Laurie. Then for more than 20 years, Joe represented the PTO and numerous appeals and civil actions. While doing so he orally argued 50 Federal Circuit appeals and drafted more than 80 Federal Circuit appellate briefs. He was also co counsel and more than 60 additional Federal Circuit appeals. Joe also litigated more than ADP to civil actions, usually involving the appeal of agency action to a district court. Joe achieved numerous victories during his federal government career. He's a registered patent attorney focusing focused on PT AB appeals. Jim Carmichael is a former administrative patent judge on the board of patent appeals and interferences. Now the Patent Trial and Appeal Board, Jim was employed by the USPTO for eight years, including working in the electrical and computer division of the board as the examiner in chief. Currently he represents inventors and patent challengers before the PTO in patent prosecution and inter partes review proceedings. Jim regularly serves as an expert witness on PTO prosecution and post grant procedures. Before becoming a judge Jim served for five years on the Associate Solicitor of the PTO. In that capacity, he represented the agency in federal court litigation and argued more than 30 cases of the US Court of Appeals for the Federal Circuit. The cases Jim handled included patentability and re examination. Jim graduated from Yale University and from University of Wisconsin law school with honors during law school, he served as an associate editor for those constant Law Review. He is a registered patent attorney and admitted to the bar in Washington, DC and California. Please join me in welcoming Joe and Jim, we are so excited to learn from you both today. And with that, I will pass it over first to Joe.

Speaker 2  2:54  
Thank you, Sammy. Okay, you're come my slides. Hopefully everyone can see my slides. Okay, so patent appeals are very important. Because PTO examiners make many bad mistakes. I know that might be hard to believe. But for patent practitioners who follow patent prosecution, both generally and specifically, there is often a correcting of examiner mistakes that can happen right before the examiner or by appeal. And I am promoting appeals because of all the mistakes that are made by patent examiner's. There's a section of the patent examination manual that says when an appeal brief is filed. The agency has to conference on whether to maintain the examiner's rejection think about that. Just filing an appeal brief, which might not be that expensive, causes the examiner who rejected a patent for an inventor and to colleagues to have to confer and actually I was recently notified from an official at the PTO that only about two thirds of examiner rejections of patents go forward meaning the examiner has to give up on about a third of the rejections issue. I call that a P Your phase one. And for inventors that has quick, frequent success. When an examiner does answer, there is still a high percentage of success at the appellate board at the US Patent and Trademark Office. The PTOs own data shows that examiner decisions for the last fiscal year were only affirmed a little more than 50% of the time. So inventors win at the patent Appeal Board close to 50% of the time more than 40% in the 40th percentile and that comes from this monthly chart table that is issued officially by the US Patent and Trademark Office and right in this bottom left box, it shows the percentage affirmance rate for examiner's is less than 56%. It's 55.9% for a whole year. So inventors have a great chance of success to get what they deserve inventions defined by the claims how they want to define them close to 50% of the time at the patent appellate board. Going back to those tables, I'm using my cursor to circle a number for the month of September. examiner rejections were only affirmed about 55% of the time 54.5% of the time. So the second phase of appeals includes much success for appellants. So I am promoting that inventors invest in obtaining deserved patents. By appealing instead of acquiescing to examiner rejections again, this data shows that examiner's make many bad mistakes during the patent application process. In October of this year, examined decisions were affirmed, again only 56% of the time. And that comes from the PTOs own data that is officially distributed at its website, right here, this affirmance box. In between the two tables. The leftmost box shows that examiner. Rejection decisions are only affirmed about 56% of the time, which means that inventors win more than 40% of the time at the patent Appeal Board going back some months to February of this year. examiner decisions were only affirmed 53% of the time that was a great month for an inventor to get an appellate decision from the patent appeal board. So the data I have been discussing shows that with regard to appeals examiner's win in the 50th percentile and inventors win in the 40th percentile, those are really good odds with respect to taking an appeal. And remember for appeal phase one I talked about how in a third of the cases which are before there is even an appeal. A third of the cases are given up by examiner's so appeal phase one and appeal phase two. show much success for inventors. This data shows that examiner's regularly issue weak rejections and the inventor community They should push back not by acquiescing by amending their claims and narrowing their patents but by appeal and investing in this way will lead to broad and deserved claims. To keep key points are do not give into poor examining. And appellate practitioners, like me can see the errors pretty crisply. With regard to taking appeals, we look for errors below and what should be appealed. So it's an investment in your patenting process by using the appeal process to not give into poor examining. Congress gave us a great corrective tool to address the examiners very high error rate which the PTOs own data shows, again, it's truly investing in getting better patent protection instead of giving up on an inventors intellectual property. examiner's issue about 10,000 of these final rejection decisions per month. However, those tables I was showing you show that only hundreds of these cases are appealed to the patent Appeal Board each month. There are many other decisions that are just not being appealed. And within that set are many decisions because of the high examiner error rate, which actually should be appealed. The examiner error rate is so high that many more cases should be appealed instead of giving in to poor examining. In inventors rights are simply being given up on instead of pushing back against faulty decisions in a smart way, by appealing more and getting examiner's to withdraw their poor decisions.

Speaker 2  12:53  
I've been looking at this data for a long time now. So I consider it due diligence that patent practitioners practicing in this field should really review prosecution records. With an eye toward appealing, do not give in to weak rejections, many inventors will get their claims that they were fully entitled to all along. appellate counsel can help analyze prosecution records again do not give into poor examining rather invest in getting stronger patents. You want people who have eyes towards appealing looking at your cases. And as I said, there are about 10,000 of these examiner final rejection decisions issued a month. A lot of them should be really and seriously considered with respect to whether to appeal or not. The odds are with inventors, to file an appeal brief and continue if necessary with an appeal to the patent board. performing due diligence early in the patent prosecution process can raise the chances of success from one out of two to two out of three and higher using specialized appellate counsel is a very smart way to go because again, the data shows there are many examiner bad mistakes out there, we should not yield to many of these mistakes. And during the prosecution correcting these mistakes will actually lead to a restoration of patent term that the term of the patent will end later. Because Congress knew that when mistakes have to be corrected, inventors should not lose out on the length of their patent term. And the PTO has a whole system for correcting the length of patent term when examiner mistakes are actually corrected during patent prosecution by successful appeals. So when we appeal, we have to write a brief showing error in the examiner rejection below. And having screened the case first, with an eye towards appealing we have a good idea of how we're going to make our points for the appellate board. And we're going to be accurate with the record and set forth irrefutable points that the examiner cannot contest. There are many ways to discuss to discuss the patentable subject matter in in ways that the examiner cannot contest being factually accurate. Since we already know what the bases for our appeal are, we can highlight parts of the application claims that will matter. In terms of pursuing the appeal. There are parts of the claim that we can really highlight to attack the rejections below. And there are other parts of the patent application that we can reference and use that support for our interpretation of the inventions. For the inventors. You use drawings, because, as we know, a drawing can be worth 1000 words. There's another part the second part of our appellate brief that ties the facts with the law to show error in the examiner's action below. So we're going to tie the facts with applicable law to pick at to isolate the examiners error. And we're going to use evidence and argument that puts the examiner on his or her eel heels. We're making irrefutable points that the examiner simply cannot contest. There's a way to write this argument section by using powerful headings. We tell the story at a high level in our headings and then discuss the facts and law underneath the headings in a compelling way, we will be thorough and show the errors that the examiner will come will yield on at some point whether it's right after our appellate brief or during the appeal. Appellate attorneys are skilled at knowing the recent state of the law and it is always good to an appellate tribunal to use higher authorities to show that we are considering both one appellate level up and even to appellate levels up in case we have to appeal even higher But we're using controlling authority in a compelling way to show the error below. When the examiner answers two thirds of the time, the examiner likely will make concessions. Because that was what we were after in, in scrutinizing the case and then in writing our appellate brief. So it is very likely that the examiner abandoned things that the examiner was attached to earlier in the prosecution. It is important to look for those concessions and point that out right away in a highlighted way, in our reply brief, our reply brief can show what's not being contested anymore. And then the second part of our reply brief will answer what the examiner is still pursuing. Now, we already filed the main brief. And we attacked the examiner's decision below in the main brief. So we can use the reply brief, to refer back to what we already set forth in our first brief and carefully attack what the examiner is still pursuing. So the reply brief should be significantly shorter than the main brief. And it uses both the main brief and what the examiner has conceded to date to show that the inventor should win on appeal, we're going to really attack the top two or three argued points by the examiner and give the appellate patent judges a clear roadmap to defeating the examiners bases to simplify the appeal. For the patent appellate judges, there are things we can even agree on with the examiner. And those are uncontested items get no time on appeal. And we're saving the tribunal time

Speaker 2  22:52  
by agreeing where we can and crystallizing what is really contested on appeal and needs to be decided by the appellate patent administrative judges. After the briefing stage there's a chance for an oral argument and I'd recommend that the inventor, the inventors, appellate counsel participate in the oral argument regularly the examiner won't be there. When the examiner is there, of course, close attention should be paid to what the examiner is presenting in person to the appellate patent judges. Remember when the inventors appellate counsel is presenting, our points were already made in our two briefs, our main brief and our reply brief. We prepared to focus on points we already made. However, the judges will almost definitely interrupt with questions pretty quickly. And that is a great opportunity to carefully listening to what is on one or more of the administrative patent judges minds with respect to deciding this appeal they are seriously considering the appeal and who is right. And again many cases more than 40% of appeals are decided in the inventors favor. So it is very frequent. Both sides have a chance. And the administrative patent judges are there with questions to figure out who is right. Answer the questions with facts and evidence. It is not a time to hypothesize and get off track. They want to decide the case on the administrative record with evidence and facts that are already in the record. We Oh such stellar appellate prosecution practice to the 1000s of inventors out there. Remember, many inventor decisions are conceded. Before there is an appeal when there is just an appellate brief. Then during an appeal, the examiner error rate is over 43% meaning inventors have a great chance of succeeding on appeal and not giving up patentable subject matter. The PTOs own data shows that that PTO examiners make many bad mistakes. And we should not cede to examiner error it is contrary to the inventors interests. Rather, we should all strongly consider investing by appealing and obtaining deserved patent patents. It is an investment in what patents will ultimately issue and the subject matter will be more in the inventors favor. And I'm reiterating the two points I mentioned a while ago do not give in to poor examining, rather invest in broad claims by appealing. Now, I'm going to hand it over to my friend Jim, who's going to talk about another very popular type of proceeding at the Patent Trial and Appeal Board. Jim.

Unknown Speaker  27:41  
Thank you, Joe. That was really good. I learned a lot of new stuff there. I appreciate that. My name is Jim Carmichael. And I'm very grateful to autumn for inviting me to speak on IPRS and their new best friend ex parte reexamination. I am a former administrative patent judge on the Patent Trial and Appeal Board. I started my career by clerking for the US Court of Appeals for the Federal Circuit, where I met Joe Piccolo, and worked in private practice and then the USPTO solicitor's office with Joe, where I argued about 30 cases at the Federal Circuit in appeals from decisions of the board. A good number of them dealt with ex parte reexamination. So I also worked on developing PTO policies for handling reexaminations as an administrative patent judge on the board that was on about 800 cases. Six years ago, I founded the law firm Carmichael IP to specialize in P tab trials like IP ours. Our firm has a good deal of luck, and was named for five years as the most successful law firm in the country representing patent owners and IP ORS with a win rate above 90%. So today, I'm going to share some tips on how to win at the P tab. Because Joe gave us statistics about winning appeals. I'll give a few statistics about winning IPR. And then we're going to move on to how to improve your chance of winning an IPR and conclude by discussing recent developments involving ex parte reexaminations being used as follow ons to IP Rs. Then Joe and I will both take questions through the q&a facility. So go ahead and enter questions as they arise by clicking on the q&a button at the bottom of your screen and then we'll get to those at the end. So first statistics, many people don't know this, but the the board is internally organized according to four technical divisions, including Electrical and Computer, mechanical and business method, chemical, and biopharma APJs are all assigned to one of those divisions. And by far the most popular division for IPR is electrical and computer. That is the division I was assigned to. Nearly two thirds of all IPRS are in the electrical and computer area. Mechanical and business method only account for about a quarter and the chemical and biopharma divisions have about 6% each, but you want to know your chances of winning. For the last five years ViPR institution rate has hovered around 65 to 70% per patent. That means most patents challenged in an IPR are subject to a patentability trial at the P tab. And only 8% of patent claims receive a final written decision upholding validity. But there are strategies for getting our our win rate closer to 90% and 8%. And I'm going to share some of those now. To improve the chances of winning, we first need to understand how the P tab is different than a district court. I've been to trial in district court in more than 25 patent infringement cases, including the largest verdict in history. So I have seen what kinds of arguments work in district court. But those arguments often do not work at the P tab and are frequently counterproductive. I see many District Court litigators trying their hand at IPR to disastrous results. The most important difference to keep in mind is that the PTO mindset is to arrive at the correct technical answer not to do justice, in fact, by assuming APJs are going to make decisions on the basis of doing justice like a district court litigator litigators risk offending APJs because that is not the job of an APJ APJs are not swayed by sweeping thematic arguments like one might find useful in district court. Rather, APKs need technically focused arguments that are backed up by evidence like Joe mentioned. Basically, if a lawyer fails to backup every argument in an IPR with precise and detailed technical evidence, he or she is at best wasting the APJs time another way to lose favor at the P tab. Difficult litigators are used to answering contention interrogatory ease and listing every possible argument they might be able to develop later in the case and change their position if need be. We cannot do that in an IPR. We basically have only one chance to say what needs to be said in an IPR litigators need to understand that the whole proceeding at the P tab is really a trial on the papers, not preliminary phases where we could shift theories later when we need to get it right the first time. Both district court and P tab proceedings involve depositions. But that seeming similarity is a trap for the unwary. In fact, IPR Depositions are way different than District Court depositions. IPR Depositions are not depositions at all in the traditional sense. They are the trial cross examination, and yet no one is watching and no one will ever watch. As a result, if a witness is totally evasive, dodgy and uncooperative, that does not come across on a transcript like it would in a district court trial. APJs are available if the lawyers halt the depositions and call them to deal with procedural issues, but will rarely observe the testimony like a judge would in a district court. I have personally been deposed more than 80 times as an expert witness in district court patent infringement cases. And I could never get away with the type of behavior that experts pull in IPRS is best to know that going in all of this call for a very different approach to IPR depositions, including how to prepare witnesses and how to conduct the examination. In a district court. There's only one judge and you know who it is from the beginning. At the P tab, there are three judges, but they are not typically identified to the parties before the initial papers are filed. A trick that might allow you to discover your panels identity early is by filing a motion for pro hac vitae admission of a lawyer who's not a registered patent attorney. And while there are three judges, only one is number one law may explain. The PTO does not publicize this, but one of the three judges is pre assigned to be the number one judge. The number one judge studies the record in detail and discusses it with a number to judge. At the number one judge is expected to write the decision, and only the number one judge gets any production credit, except in the rare case of a substantial dissent. In my experience, the number one judge does far more work on a case than the number two judge and the number three judge does even less. Therefore, the number one judge has great influence over the IPR even though it is a secret who is the number one judge an experienced IPR attorney can sometimes define the identity of the number one judge and tailor arguments accordingly. In District Court, it's very hard to prove invalidity. The Challenger must prove invalidity by clear and convincing evidence and must persuade a finder of fact that is likely to differ somewhat to the examiners determination that the invention is patentable and the big shiny sticker placed carefully on the issued patent.

Unknown Speaker  36:24  
In an IPR, the challenger only needs to prove unpatentability by a preponderance of the evidence. And the APJs do not differ to the shiny sticker on the issued patent, or the examiner that allowed it. In some, the P tab is generally a better forum to challenge a path and over prior art and District Court, and there are differences must be kept in mind to maximize chances of winning at the P tab. Now, how do you win at the P tab? Here are my top 10 tips for winning IPRS. Number one, the patent owners attorneys should take a hard look at every word of every claim, even if it seems trivial at first. Under the Supreme Court decision in shs the Supreme Court is stuck with what isn't included in the petition. If a petition glossed over any limitation, patent owner should cite the P tab rule requiring the petition to point out where in the prior art, every limitation can be found. This can often lead to a finding of patentability based on a point that would be too esoteric or seemingly trivial in district court. Number two, similarly, patent owners should evaluate whether the petition has glossed over dependent claims that have a good infringement read. Winning on a claim like that is really can be just as good as winning on on independent claims. Number three, the IPR attorneys for both sides must work closely with their clients litigation counsel every step of the way to make sure arguments for claim construction and patentability. Do not unduly box in the district court litigators. Number four, consult with a technical expert. as smart as we lawyers like to think we are, the expert often sees things we don't. In District Court litigators might develop their own theories and ask an expert to support them. Before the technical audience of the P tab though, we need guidance from the experts. I often try to hire the author of one of the cited references because they know where all the bodies are buried. Number five, before taking expert depositions, both parties should research patents and publications of the opponents expert or find some other way to get them talking in an unscripted manner during the cross examination, because otherwise, unlike a district court trial, experts can Stonewall during an IPR trial with relative impunity. Number six, a great approach for petitioners is to include annotated prior art drawings in color to show how the combination would result in the claimed invention. This is helpful, because before the hearing, the number one judge usually explains the case to the number to judge by referencing the prior art drawings and the challenged claims. So why not make it easy for them to see it

Unknown Speaker  39:47  
your way?

Unknown Speaker  39:49  
Petitioner petitioners have the burden number seven petitioners have the burden of proof and so should avoid relying on conclusory statements of experts. A district court may adopt an expert opinion if it sounds reasonable, but the P tab requires detailed evidence and reasoning, backing up every single opinion Otherwise, they'll be rejected as what they call Ypsi Dixit. I think that's Latin for because I said so. And that doesn't fly at the at the free tab in an IPR number eight. Here are my two favorite arguments that tend to have a good chance of winning for a patent owner owner. Number one, a claim element is completely missing from the asserted prior art combination or to a references not proven as prior art in the petition. That P tab has exacting standards for such proof. Number nine, equally important to a patent owner is avoiding arguments that tend to lose at the P tab. Here are four arguments that are popular with patent owners, but almost always lose teaching away non analogous art attacking references individually instead of dealing with their combination and inoperability of bodily incorporating one priority system into another. Tip number 10 of my top 10 tips for winning IPR is for oral argument is to avoid putting the entire argument in demonstrative P tab rules require the parties to exchange demonstrative the week before the oral argument. Most people put a lot of effort into demonstrative and give away their whole argument to opposing counsel a week in advance. I prefer only to include demonstrative that the opposing party knows will be part of the discussion. The APJs have easy access to all parts of the record during oral argument. And we can direct them to what we want them to look at which we need to stay on the record anyway. I'm going to move on now to recent developments in IPRS. Especially involving ex parte reexamination lately, being fortunate enough to have some of your claims, escaping IPR unscathed does not necessarily mean getting out of the PTO unscathed. With apologies to former Chief Judge writer, there is a new death squad in town here in Washington DC, the central reexamination unit. Disappointed IPR petitioners, more and more are turning to ex parte reexamination filing a patentability challenge very similar and sometimes identical to one that did not succeed at the P tab. Statistically, there's very little chance that a reexamination request will be refused by the PTO. In the last full year of statistics. Only 6% of ex parte reexamination requests were denied. The most recent quarter for which statistics are available the first quarter of 2021 at 46 orders granting re examination and zero orders denying re examination. When 100 words when 100% of reexamination requests are granted, accused infringer is perceived very little risk. At the very least, defendants can inform the court that the PTO found a substantial new question of patentability and asked the court for a stay of the litigation, even though there's no time limit for the PTO to complete a reexamination. But wait, you might say everyone knows ex parte re exam procedures favorite patent owners. However, this statistics do not bear this out. Only 20% of patents survive ex parte reexamination with all claims intact. Disappointed IPR petitioners are defendants who missed the one year window for filing IPR petitions are finally catching on and filing many more ex parte reexaminations. In fact, for a good while our firm's work was almost entirely IPRS. And now it's half IPRS and half post IPR reexamination. So it's important to learn how to win ex parte reexamination which is itself quite different than litigation, IP ours and regular patent prosecution. As someone who helped develop the PTO procedures for ex parte reexaminations I can tell you that ex parte reexamination is its own unique procedure with its own peculiar tricks and traps. Interestingly, the PTO recently but quietly installed the former chief judge of the P tab as the head of the Central reexamination unit. Whether Chief Judge, former chief judge waterski makes the CRU more like P tab is yet to be seen. But that may be a work in progress right now. About six weeks ago, now, two months ago, the Federal Circuit in inrae event faulted the PTO for granting a reexamination request, similar to a previously denied IPR request, under very particular circumstances, where the IPR had been denied as an abusive serial challenge under 35 USC 325. D, the Federal Circuit took pains to say the holding was limited and narrow, but many patent owners will be attempting to use of Vivint to fight off re exams filed after unsuccessful IPR hours. This is another area in which we are participating and watching closely. In conclusion, I see we have a few questions that viewers have typed into the into the q&a box and Joe and I will take turns answering those for the next 20 minutes or so. If you have not already done so, we encourage you to type your questions on appeal IP RS and re exam into the q&a box at the bottom of your screen. We will read them without identifying the person submitting the question. So you can remain anonymous. Joe, would you like to take the first question? Yes.

Speaker 2  47:01  
I have a question on the length of time for the pendency of an appeal. At the P tab. The BTOS data is very promising. It shows that now it's approximately a year after appeal phase one meeting, the PTL group decides to defend the examiner's rejection. And again, that happens in about two thirds of the cases that inventors contest. After the briefs are filed, it's about a year. In some cases, it's even significantly less than a year. In the mechanical arts. I'm looking at the PTO zone data. It's closer to nine months. So there has been good progress at the patent appellate board to get through these cases faster. And again, maybe appeals are given up earlier, which also helps inventors. The PTOs own data shows that it is not that long, to await the end of an appeal. And with practitioners such as Jim and myself scrutinizing the records and carefully advancing the appeal in the inventors favor. winds down the end of the road will lead to the adjustment of patent terms. So even if it is a year to await a favorable decision for an inventor, the time will be made up through patent term adjustment. Jim, do you see a question for you? Yeah. And

Unknown Speaker  49:14  
Thanks, Joe. That's a really interesting point that the PTO has done a great job of reducing dependency of appeals. So when you think about how I used to be where you wait years, that just doesn't happen anymore. So that's a really good point and also about getting the time back on the on the patent term adjustment. So Thanks, Joe. That's an important point. Yeah. So next question is, Jim do you recommend for filing objections to evidence in IP Rs? And I say generally, no. The only reason to file objections to evidence is to preserve the right to file a motion to exclude which is very rarely granted in an IPR objections to evidence permit the proponent of the evidence to file supplementary evidence they otherwise could not have. So there's a downside. I rarely recommend filing objections to evidence, but I love it when my opponents do, and give me a chance to file some more stuff. Joe, next question is for you.

Speaker 2  50:26  
Okay. Another question has been about scrutinizing the record and assessing the examiners final rejection decision with respect to deciding to appeal or not, how much typically will it take in terms of investing in time required to scrutinize the record with an eye towards appealing? I did this not long ago within my firm on a case. And basically, for that case, and other cases that I'll be dealing with five to 10 hours is usually sufficient time to scrutinize the record below and see where you think the examiner heard maybe the examiner didn't make an error and it's pretty cut and dried do not appeal. However, for a lot of the 10,000 final rejection decisions issued each month, there will be many cases that have error. Again, the PTOs own data shows that unfortunately, examiner's make many bad mistakes during prosecution. So a lot of records will have almost glaring errors that can be analyzed, and a strategy could be written out for the inventor to decide to appeal or not. And the timeline for doing something like that in terms of appellate attorney time, should be on the order of, let's say seven hours plus or minus. Okay, Jim.

Unknown Speaker  52:23  
Thanks, Joe. That's good insight. The next question is, Jim, do you recommend requesting rehearing? So statistically, less than 10% of rehearing requests grant relief of any sort. And for the most part, rehearing just gives the AP Jays a chance to harden their position to avoid being reversed on appeal. And the P tab does and can take advantage of that. So generally, I don't recommend requesting rehearing. The next question is for Mr. Piccolo.

Speaker 2  53:09  
A question pertains to different types of rejections. I think Jim talked about how we could have obviousness or patent eligible subject matter. And what might be a rejection that should lead to a favorable outcome for the inventor are different types of rejections, quote, unquote, created equal. And a very informative study at patently Oh, by Professor crouch, yielded that rejections based on the prior art inspires specific obviousness, lead to reversals by the Patent Trial and Appeal Board more than other types of rejections more than for example, whether the application has patent eligible subject matter. We may have heard that the Supreme Court has set forth different tests for when subject matter is not patent eligible. And it's not easy to get that reversed by the Patent Trial and Appeal Board. However, cases based on prior art such as obviousness or lack of novelty, those types of cases have a better chance of being upset at the Patent Trial and Appeal Board gym.

Unknown Speaker  54:57  
The next question is, do you recommend a pending claims in an IPR to that I say only when there is no continuation pending and limited past damages. Aqua products case double the success rate of amendments from seven to 14%. But it's very difficult and expensive to go through the amendment process in an IPR, and of course you have your opponent sniping at you every step of the way. It basically creates a parallel trial that doubles the cost of an IPR. It's much easier to amend claims in an ex parte proceeding, such as a re exam or reissue. Joe, what's the next question on appeals?

Speaker 2  55:51  
Okay, there's another question, which touches on one of the first items I spoke about, and that is, when an appellants main brief is filed, does the examiner have to defend his or her rejections within the examining court? And one of my first slides cited to the patent examination manual, section 120 7.01. And that specifically sets forth that with the examiner. There has to be a supervisor, a supervisory patent examiner, they're called Spees. At the Patent and Trademark Office, and then also there is to be an experienced examiner. And those three PTO officials caucus on is the rejection defensible? So the goal is to write such a powerful appeal brief. Again, after scrutinizing the record to see what are good grounds for appeal, and then the main brief that's filed before this conference under the manual of patent examining procedure section 12 Oh 7.01. That conference has a good chance of leading to a withdrawal of the examiners rejection, the PTOs own data, which was provided to be another PTO official shows that in about 35% of cases, once there is just a main brief filed, hopefully by skilled appellate counsel, in those 35% of the cases, the outcome right then, and there is in the inventors favor. Okay, Jim.

Unknown Speaker  58:08  
Thank you, Joe. The next question about IPR is is do you have any other tips for oral argument and IPR? I do. Have a few. First before the oral argument. Have a thorough moot court with people who know the case and will ask hard questions. This can be kind of uncomfortable, because usually, your colleagues know where that the holes in your case are and can can really raked over the coals. But it's good to get that over with in the within your own team, instead of giving it first before the judges. Second plan your words carefully. The arguments are recorded and transcribed. And anything you say can and will be used against you. Attorneys are more likely to lose a case in an oral argument than to win one. Oh, I think that's it. Joe, I think the next question is for you.

Speaker 2  59:15  
Thanks, Joe. The last question for me, talks about strategies with respect to discussing the law. And is there a strategy as to citing certain types of Federal Circuit, higher authority cases to the Patent Trial and Appeal Board? I touched on this as well and there is a very logical and sound strategy. An appeal can be taken from the Patent Trial and Appeal Board to the Federal Circuit and the Federal Circuit issues. A lot of law In the patent prosecution area, obviousness combining references, inerrancy, and other patent prosecution doctrines, staying current with that law, and citing cases that are within the last year, hopefully maybe even within the last six months is a good strategy, because that shows the Patent Trial and Appeal Board that the law is on your side, especially even as of late. And it's just human nature that the the appellate tribunal that's getting the case wants to comply with the tribunal above them, and not make an error of law that could be subject to appeal itself. So the most recent Federal Circuit cases are a good way to go. And then, if you go backwards in time, over through the next five or 10 years, you can regularly find a case that makes up with your facts, maybe even something in your technical field that can help you first analyze your grounds for appeal, and then explain that to the Patent Trial and Appeal Board. And citing these types of cases, recent cases and cases that made up with your facts should only lead to a favorable result for the inventor. Jim, do you see another question for you?

Unknown Speaker  1:01:47  
No, that's it for me, I could offer a closing thought and then let you take us out. Like closing thoughts are to remember that IPR is and district court actions reexaminations patent prosecution and appeals are are five very different proceedings. And with different skill sets and approaches required, we need to make sure that attorneys with the proper skill set are assigned to each of those five types of proceedings. Joe?

Speaker 2  1:02:28  
Thank you, Jim. What I set forth in my slides was largely about errors at the PTO. And with a careful set of eyes, you can find those errors and show the errors to higher authority. It's done very often. The PTOs own data shows that what I see through the data is that it should happen more frequently, because the people who are losing out not showing the data and getting it corrected are inventors inventors have deserved subject matter out there that they should get an issued patents. So looking for the errors and showing the errors are truly an investment, an investment in getting better and stronger paths. Sammy, I turn it over to you. Thank you.

Speaker 1  1:03:48  
Thank you on behalf of autumn I would like to thank both of you, Joe and Jim for such an informative discussion today. answering all of those great questions and attendees. Thank you for also joining and listening in with us today. A few quick housekeeping remarks before I let everyone go as a reminder, a recording of the webinar will be available for viewing before the end of the week on the autumn Learning Center. And that is included in your registration. I asked him to please complete the webinar evaluation which will pop up when you close out of this session. You will help us serve your needs in the future. And last but not least, don't forget to register for autumns Annual Meeting beginning on February 20. In New Orleans, we hope to see all of you there for that with us. And again, thank you both so much for for sharing all of this knowledge and wisdom and attendees. Thank you again for joining us. So with that I will say thank you and have a wonderful rest of your afternoon.

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