LEAP Eligible Practitioners Try Their Hand at Oral Advocacy in LEAP Mock Arguments before the PTAB
On August 7, 2020, the PTAB and the PTAB Bar Association hosted the first ever PTAB Oral Argument Boot Camp for LEAP eligible practitioners which included opening remarks from USPTO Director Andrei Iancu, a mock inter partes review before sitting PTAB judges, and an oral argument practicum.
Legal Experience and Advancement Program Overview
Effective May 15, 2020, the United States Patent and Trademark Office (USPTO) launched the Legal Experience and Advancement Program (LEAP) “to encourage the professional development of patent attorneys and agents appearing before the [Patent Trial and Appeal Board (PTAB)] through increased opportunities for oral advocacy.” The most notable feature of the USPTO’s initiative for incentivizing oral advocacy development is that the PTAB will grant up to 15 minutes of additional argument time to parties participating in LEAP upon a request for LEAP practitioner participation.
Practitioner eligibility for LEAP participation is somewhat limited. To qualify as an eligible LEAP practitioner, a patent agent or attorney must meet the following qualifications: “(1) three or fewer substantive oral arguments in any federal tribunal, including the PTAB, and (2) seven or fewer years of experience as a licensed attorney or agent.” A prospective LEAP practitioner seeking to participate in an oral hearing before the PTAB may submit by email a LEAP Practitioner Combined Request and Verification Form to confirm eligibility after the Board has assigned an oral hearing date in the case and at least five business days before the hearing date.
The benefit of LEAP to upcoming practitioners, however, is not limited to opportunities involving direct participation in oral hearings before the PTAB. In furtherance of the USPTO’s incentive to increase opportunity for oral advocacy development through LEAP, the PTAB has also begun to offer various oral advocacy training opportunities. For example, the PTAB has recently hosted free webinar training sessions titled “Learn to argue before the PTAB” with speakers such as Deputy Chief Judge Jackie Bonilla and Vice Chief Judge Janet Gongola. Additionally, the PTAB and the PTAB Bar Association jointly organized a PTAB Oral Argument Boot Camp (listed as “Oral Argument Practicum” on the USPTO website) which included, among other training portions, a mock argument.
PTAB Oral Argument Boot Camp Recap
I was given the invaluable opportunity to participate in the first PTAB Oral Argument Boot Camp, and I will summarize the Boot Camp and my experience below.
Approximately three weeks before the scheduled Boot Camp, forty selected participants were assigned co-counsel to represent a hypothetical Petitioner or hypothetical Patent Owner in a mock inter partes review (IPR) and were given a PTAB LEAP Mock Argument Case File. The Case File included a Petition for Inter Partes Review, a Patent Owner’s Response, a Reply in Support of Petition for Inter Partes Review, and a number of exhibits. The relevant facts required for the purposes of the mock IPR were contained therein – additional legal research to further develop arguments was permitted. During the 3 week period of time leading up to the Boot Camp, assigned co-counsel pairs collaborated to prepare arguments for the mock IPR.
On the day of the Boot Camp, participants were provided two separate Webex links. The first Webex link was for a general room in which opening remarks were given and in which the Practicum was held following the mock IPR. The second Webex link was for a smaller Webex room leading to the individual “Hearing Rooms” in which each of the ten Mock Arguments took place from 1:30-3:00 pm.
During opening remarks, Scott Boalick, Chief Administrative Patent Judge of the PTAB, emphasized that one goal of LEAP is to serve “as a launchpad for the next generation of PTAB oral arguments” making first argument opportunities possible for upcoming practitioners. Subsequently, Director Andrei Iancu provided keynote remarks highlighting that LEAP was created to remove the impediments to junior practitioners in gaining oral argument experience. Specifically, with respect to the first ever LEAP Mock Arguments, Director Iancu explained three primary goals of the program: first, to provide an opportunity to practice oral advocacy skills in a lower pressure environment; second, to provide an opportunity to gain familiarity with the structure and pace of the PTAB; and third, to provide an opportunity to gain valuable feedback from PTAB judges following the Mock Arguments. After the keynote remarks, Director Iancu switched roles to preside over one of the Mock Arguments.
During the Mock Argument segment of the Boot Camp, participants were given the opportunity to try their hand at oral advocacy in a mock IPR before a panel of sitting PTAB judges (and Director Iancu). Prior to the hearing, each co-counsel pair was reminded that a total of 30 minutes was assigned to each party to present arguments with the ability to reserve up to 10 minutes for rebuttal and sur-rebuttal. The Petitioner was the first to present arguments followed by the Patent Owner. During the hearing, the judges did not inquire into the technical aspects of the case as they would in an actual IPR. However, there were a number of factual and legal questions for each practitioner throughout the mock IPR indicating each judge’s in-depth familiarity with the Case File. Specifically, the nature of the judge’s questions and posed hypotheticals went deep into the factual and legal issues presented in the Case File which made for a truly immersive and rewarding mock argument experience.
At the conclusion of the mock IPR, the panel of sitting PTAB judges gave general and individualized feedback relating to oral advocacy. For example, in my Hearing Room, the panel provided commentary on the following:
statements and strategies which made practitioners seem more or less credible, such as having a strong command of the case law and case file, making constant reference to the same where applicable, and knowing how to comment on case law that stands for a position counter to the arguments being presented;
the importance of answering specific questions before proceeding with an argument, noting that a key component of the hearing is to afford judges the opportunity to gain clarity on specific issues or arguments present in the case file which may not have been addressed to the judge’s satisfaction;
suggestions in fielding difficult questions from the judges, such as seeking clarification on questions which are unclear rather than spending time answering a different question and following a response to a judge’s question with a statement seeking assurance that the response was satisfactory; and
tactics for effectively presenting an argument before the PTAB, such as outlining the key takeaways or how the arguments were to be divided by co-counsel prior to diving into the substance of the argument, not wasting time on background as the judges are typically familiar with the case file prior to the hearing, and maintaining a cordial demeanor throughout the proceeding.
Following the Mock Argument feedback session, participants rejoined the initial general Webex room to attend an hour long interactive Practicum entitled “Oral Advocacy Deconstructed.” The Practicum focused on oral advocacy from the perspective of a judge and was broken into 3 segments which discussed the beginning, middle, and end of a hearing. The Practicum was made to facilitate a conversation between practitioners and panelists and to reinforce a number of principles relevant to oral advocacy and preparation.
In sum, the PTAB Oral Argument Boot Camp, particularly the Mock Argument portion, was an invaluable experience – one that any LEAP eligible practitioner would find to be a useful training tool for developing their oral advocacy skills in any forum. For me, the most valuable portion of the experience was having the opportunity to try my hand at oral advocacy and to receive individualized feedback from sitting PTAB judges following the Mock Argument. Of note to LEAP eligible practitioners, it was communicated that PTAB and the PTAB Bar Association will likely be hosting a subsequent oral hearing boot camp in the near future. In the event that a subsequent Boot Camp is held, I highly suggest that any qualifying LEAP eligible practitioner participate.