Veteran IP Litigator Discusses PTAB Strategies in New Book

Your book offers an array of guidance for practice at the Patent Trial and Appeal Board. What are one or two of the most important procedural tips for people who are new to the area?

One of the key differences [from district court] is the scope and breadth of discovery, and what's involved there. The second one would be the petition itself, and how careful you have to be with what you put in it, what you don't put in and why, and the strategies involved with doing both.

Can you give an example?

I've seen cases where people have amalgamated a lot of prior art and just generally referred to it, and the board certainly doesn't seem to like that. They like it clear and concise. As a matter of fact in the Cuozzo decision right now, one of the issues is whether the board is allowed to come up with its own combinations of prior art.

There are two issues before the Supreme Court in Cuozzo. The first, and the one that gets most of the attention, is the different claim construction standards applied by the PTO and the courts. Why is that so important?

So the slang we like to use is broadest reasonable interpretation, BRI, and that's what the patent office is applying. And in the district courts, people typically refer to it as a Phillips analysis. Think how almost silly it is that there are two different standards for the same document. The broadest reasonable interpretation is either what should apply in district court, or the PTO should apply Phillips. They should be consistent.