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Six Tips for Demonstratives in PTAB Hearings

Oral hearings before the PTAB are the time to shine, to convince the judges why your position is right, why your opponent’s position is wrong, and to address questions head-on and reassure the judges regarding any real or perceived weaknesses in your case. Parties are typically granted up to one hour to argue their case – which is a lot of time to talk. Also, exchanges with the judges often will focus on the technical details of the case, which conversations can be greatly assisted with visual aids. Thus, demonstrative slides are crucial to keeping the judges’ attention over that time span, and to ensure that your key points and answers to questions are conveyed clearly. Below are six tips to consider in preparing your demonstratives:

DO: Include key portions of specific exhibits (text and/or figures) that will be focus of discussion.

Panels usually allow highlighting and other similar measures to focus attention on key details, and this ensures that the panel will understand your key points and will ask questions if unclear. Including cites to the record is also helpful to the panel, and shows that your argument is backed by evidence. It is also helpful to be able to quickly pull up and show specific portions of exhibits that come up during oral argument – this capability allows the demonstratives themselves to be more concise and streamlined.

DON’T: Prepare an entire, hour-long slide presentation and then plan to read from it – this is seldom if ever the most effective oral argument technique.

Moreover, questions from the panel will usually force deviations from your slides and make it difficult to maintain the flow of any pre-planned speech. Demonstratives are also seldom filed as an exhibit, and the judges aren’t likely to look at or consider them after oral argument is completed. You are much better off knowing the record and being able to pull up a specific exhibit to show important text or figures in response to questions, rather than attempting to have pre-prepared demonstrative slides for every question that may arise.

DO: Provide appropriate transition slides, indicating that you are moving from one topic to another.

These can be used to highlight that you are moving on to a new reference, or a different argument/ground of rejection, that you want to address. Over an hour-long time period, such slides help keep the panel focused on each separate topic you wish to cover, and also allows you to quickly move to that section of your slides should a question arise sooner or later than planned.

DON’T: Include new argument/evidence in your demonstratives.

Oral hearing materials should be based on evidence that is already of record, and should generally track arguments already in the briefs. In some of the early proceedings, panels often entertained (and addressed) slide-by-slide objections as to what was or was not “new” evidence or argument, although more recent practice seems to lean away from such a slide-by-slide analysis. Nonetheless, a sure way to flag a weakness in your existing position is to attempt to make new arguments or introduce new evidence at the hearing. Putting such arguments/evidence in your demonstratives is particularly undesirable, as it ensures that your opponent will make sure the Board is aware of it.

DO: Review your opponent’s demonstratives in detail, and be prepared to rebut all arguments included therein.

You don’t know for sure what your opponent may say at the oral hearing, but your opponent’s demonstratives strongly suggest what their main points will be – so learn from them and be ready with your best counter-arguments.

DON’T: Include all of the detail of your argument in your demonstratives.

As noted above, your opponent will study your demonstratives closely in preparation for rebutting your arguments, and there is little incentive to make their job easier. In addition, saving your key points and conclusions for your oral remarks will help ensure that the panel members are listening and paying attention to you, instead of simply reading your slides.

In sum, demonstratives are a crucial tool for organizing and conveying the topics you wish to cover during the significant amount of time a party typically has for oral argument in PTAB proceedings. Despite the length of time available, however, it is advisable to avoid creating a large set of demonstratives that won’t be covered in large part, or in an orderly fashion, during the hearing. Instead, the most useful demonstratives will contain helpful excerpts from the most relevant evidence, that are then used to assist you with your argument and responses to the panel.

© 2020 Foley & Lardner LLPNational Law Review, Volume V, Number 197


About this Author

michael r. houston, foley lardner, intellectual property attorney, patent lawyer

Michael R. Houston is a partner and intellectual property attorney with Foley & Lardner LLP, where his practice focuses on patent challenges before the USPTO, and patent litigation at the trial and appeal levels across a wide array of technology areas. Dr. Houston has litigated patents involving pharmaceuticals, medical devices, biorenewable fuels, microelectronics fabrication and packaging, electronics, and general chemical and polymer processing, among others. More recently, Dr. Houston has been heavily involved in inter partes review (IPR) proceedings at...