The Practitioner Guide to Trials Before the Patent Trial and Appeal Board

Trials before the Patent Trial and Appeal Board (PTAB) are a hybrid of conventional patent prosecution and patent litigation practices. Successfully navigating a PTAB trial may entail tasks ranging from analyzing highly technical prior art to deposing scientific experts, drafting patent-claim amendments, and arguing at an oral hearing before an expert panel. The authors, all experienced litigators who have handled several hundred PTAB proceedings, explain the PTAB statutes and rules, including recent updates and rule changes, along with lessons learned from the growing body of Federal Circuit case law reviewing final PTAB decisions. They include strategic guidance on litigating these cases along with a description of a PTAB trial from petition preparation to appeals to the Court of Appeals for the Federal Circuit.

Erika Harmon Arner is a partner at Finnegan, Henderson, Farabow,Garrett & Dunner, LLP, in Reston, Virginia, where she has represented both patent owners and petitioners in over 100 trials—most as lead counsel—before the Patent Trial and Appeal Board (PTAB).

Kathleen A. Daley is a partner at Finnegan, Henderson, Farabow,Garrett & Dunner, LLP, in Washington, D.C., where she has extensive experience in litigation before district courts, the USITC, the PTAB, and the U.S. Court of Appeals for the Federal Circuit.

Michael J. Flibbert is a partner at Finnegan, Henderson, Farabow,Garrett & Dunner, LLP in Washington, D.C., and has than 20 years of patent litigation experience.