Categories
PTAB

PTAB Hearing Room Decorum

The PTAB requires all attendees to maintain a professional appearance appropriate for appearing before a tribunal. Counsel appearing before a panel are required to wear formal business attire. Observers at a hearing are required to wear either formal business attire or business casual attire.

Business casual attire does not include jeans, t-shirts, tank tops, athletic shoes, sneakers, flip flops, or thong type sandals. Questions regarding dress code should be addressed to the hearings team prior to the date of the hearing.

Professional conduct and respect for general guidelines allow hearings to flow efficiently and promptly. The panel reserves the right to remove anyone who does not follow these guidelines. When the announcement is made before the start of the hearing, please adhere to the following guidelines:

  1. No personal recording devices are allowed in the hearing room.
  2. Please turn off cell phones and electronic devices, except those used for demonstratives at the counsel table. Use of electronic devices in the gallery is prohibited.
  3. No food or drink, except water, is permitted in the hearing rooms.
  4. Unless the judge permits, there will be no entries/exits from the hearing rooms. This minimizes interruptions and distractions.
  5. During the hearing, excessive talking or loud outbursts are prohibited. No one is to be heard except the judge or counsel presenting an argument to the panel.
  6. Improper hearing room behavior may result in removal or other sanctions.

Categories
PTAB

PTAB Public Admission

Our hearing locations include Alexandria, Virginia; Detroit, Michigan; Denver, Colorado; San Jose, California; and Dallas, Texas. Our regional locations and Telework Enhancement Act Pilot Program afford the PTAB the opportunity to provide work locations for APJs in specific regions with diverse legal and technical experience.

The PTAB hears public and non-public hearings. Public hearings are open to the general public for observation. Non-public hearings are closed to the general public; only parties associated with the case are allowed to observe. All hearing rooms vary in size and the smaller rooms in Alexandria, Virginia, and the regional offices may fill to capacity; however, the regional offices have designated overflow rooms for such instances. If a hearing room fills to capacity in Alexandria, Virginia, and there is an available hearing room, it can be used as an overflow room. In all overflow rooms the public will have the ability to see and hear the oral hearing in its entirety. The PTAB does not take reservations from the general public for hearings. All entry is on a first-come, firstserved basis.

Visitors to public hearing rooms must undergo security screening. All visitors require a valid form of government-issued identification to gain access. Patent practitioners and agents should counsel their clients about the PTAB visitation procedures (e.g., the need to bring photo identification and appropriate courtroom etiquette and attire). Security procedures vary in each regional location. Therefore, please arrive at least 30 minutes before the scheduled hearing to arrive on time. For groups of 10 or more observers, please contact the deputy clerk for information needed to aid security. In Alexandria, Virginia, after passing through security, all parties, as well as public attendees, are to proceed to the attorney waiting area on the 9th floor of the Madison East Building and sign in at the usher desk. The usher will assist the parties with sign in procedures and provide any requested information. All parties and public attendees will remain seated in the hearings waiting area until instructed to enter the hearing room.

Ex parte appeals and reexaminations are scheduled in hearing sessions containing up to six proceedings being heard. After you sign in and are seated, the judges will inform the usher when they are ready for the first case. The usher will escort the attorney and any attendees into the hearing room. The attorney will be directed to the podium to present oral argument. Attendees will be directed to have a seat in the gallery of the hearing room. Each case in the hearing room will be called and heard separately by the judges.

For AIA trials, all parties and public attendees will be permitted in the hearing room approximately 15 minutes prior to the start of the session. Parties are given this time to set up and ensure computers are functional for presentation purposes. Late entry into the hearing room will not be permitted.

The PTAB conducts a large number of proceedings in Alexandria, Virginia, and in all regional offices throughout the year. Many of these proceedings may be of interest to various audiences not directly involved with the proceeding. The PTAB supports the observation of these proceedings by internal and external stakeholders (both in-person and remotely from regional office locations). It is important, however, to ensure the hearings team in Alexandria, Virginia, is aware of all proceedings in which it is expected that there will be more than five observers associated with the parties in the hearing room as well as any observers located remotely from within the USPTO. The hearings team may be contacted by any of the response methods set forth in the Notice of Hearing (appeals) or by emailing Trials@uspto.gov (AIA trials).

AIA trials
Categories
PTAB

PTAB Notification of a Hearing

Ex parte and reexamination appeals

Once the calendar is finalized, the PTAB will send a Notice of Hearing to all involved in ex parte and reexamination appeals. The Notice of Hearing will indicate on the first page the date, time, hearing room, and location of the hearing.

Upon receiving the Notice of Hearing, the appellant will be required to respond, either confirming or waiving attendance at the hearing on the specified date and time. In inter partes reexaminations, copies of all communications to the USPTO must be served on opposing counsel. See 37 CFR § 1.903. This requirement applies to hearing-related correspondences such as, but not limited to:

  • a confirmation or waiver of hearing attendance,
  • a request for video or telephonic participation,
  • a request for an easel or projector,
  • a request for a hearing postponement,
  • a request for pro hac vice admission, and
  • a request for additional argument time.

The PTAB issues Notices of Hearing for heard appeals that have docketing notice dates that are approximately the same as the docketing notice dates of the PTAB’s oldest “on brief” appeals in the same technology. That way, an appellant’s decision to request an oral hearing neither accelerates nor delays a decision being rendered for that appeal.
Appellants have three ways to present a hearing before the PTAB. A hearing may be an oral argument in person, a telephonic conference, or a video appearance. The following clarifies each type of hearing:

  • In-person hearing – An appellant appears before a panel of three (or more) judges at a designated PTAB hearing location. However, please be aware that up to two of the judges on a panel may participate remotely.
  • Telephonic hearing – An appellant participates in the oral hearing via a telephonic connection. Currently, as a precautionary measure to protect the con?dentiality of information, telephonic hearings are reserved for APJs and counsel. Upon receipt of a telephonic hearing request, the PTAB will issue an order specifying the phone number and time of the telephonic hearing. All expenses for the call will be borne by the appellant that requests the call.
  • Video hearing – An appellant participates in the oral hearing via an audio-visual connection. An appellant that requests a video hearing will incur any associated costs with the arrangements of the video hearing. Upon receipt of the video hearing request, the PTAB will issue an order instructing the appellant to contact the PTAB to schedule a test of their equipment and connection. If the test is unsuccessful, the appellant will receive dial-in instructions to have a telephonic hearing instead of a video hearing, at that time. The PTAB also allows appellants the opportunity to request a video hearing from any available regional office location. However, due to the availability of resources, it may not be possible to grant the request in all instances.
  • Remote viewing – The USPTO’s regional office locations in (1) Detroit, Michigan; (2) Dallas, Texas; (3) Denver, Colorado; and (4) San Jose, California are generally available for any member of the public to view a hearing, subject to room availability and advance coordination with the PTAB. For example, appellant’s in house counsel located in Palo Alto, California may wish to view the hearing from the USPTO’s regional office in San Jose, California as opposed to traveling to a hearing scheduled to occur at the USPTO’s headquarters in Alexandria, Virginia for time efficiency and economic considerations. To request remote viewing, appellant must inform the PTAB as to the USPTO’s regional office location and the number planning to view the hearing from the remote location. The PTAB will notify appellant if the request for remote viewing is granted. However, due to the availability of resources, it may not be possible to grant the request in all instances.
  • Waived hearing – When an appellant has decided an oral hearing is no longer necessary, they can waive attendance. This waiver allows the panel to promptly act on the appeal without having to wait for the oral hearing date.

All of the above options are described on the Notice of Hearing. The appellant must choose an option in response to the Notice of Hearing.

For all options, the PTAB will provide a court reporter at the designated PTAB hearing location and will enter the transcript into the record.

AIA trials

In an AIA trial, the parties will be notified of the date and location of the oral argument in a Scheduling Order. The panel may also hold a conference with the parties after the Scheduling Order has been issued should it be necessary to consider a change to the previously scheduled date or location of the oral argument. Any changes to the oral argument date and location after the issuance of the initial Scheduling Order will be reflected in a separate order from the panel.

Oral argument – If an oral argument is requested, the parties will be notified of the finalized hearing date, time, and location by a Trial Hearing Order issued by the PTAB. The panel will ensure scheduling of oral arguments including subsequent changes are communicated to the hearing operations staff. Once a Trial Hearing Order has been issued, parties should address any requests for audio-visual equipment, via email, directly to Trials@uspto.gov within the designated period. Questions regarding specific audio-visual equipment should be directed to the PTAB at 571-272-9797.

Remote viewing – The USPTO’s regional office locations in (1) Detroit, Michigan; (2) Dallas, Texas; (3) Denver, Colorado; and (4) San Jose, California are generally available for any member of the public to view a hearing, subject to room availability and advance coordination with the PTAB. For example, a party’s in-house counsel located in Palo Alto, California may wish to view the hearing from the USPTO’s regional office in San Jose, California as opposed to traveling to a hearing scheduled to occur at the USPTO’s headquarters in Alexandria, Virginia for time efficiency and economic considerations. To request remote viewing, the party must submit a request to the PTAB via email to Trials@uspto.gov as to the USPTO’s regional office location and the number planning to view the hearing from the remote location. The PTAB will notify the party if the request for remote viewing is granted. However, due to the availability of resources, it may not be possible to grant the request in all instances.

Remote viewing

Categories
PTAB

PTAB Scheduling Hearings

The deputy clerk, located in Alexandria, Virginia, schedules all hearings held before the PTAB. Hearings are held at the PTAB Monday through Friday between the hours of 9 a.m. and 5 p.m. with morning and afternoon sessions in all USPTO offices. The expansion of the USPTO regional offices now allows the scheduling of oral hearings across the United States. These regional facilities directly support the PTAB’s mission.

Ex parte hearings at the PTAB begin at 9 a.m. and 1 p.m., and reexamination hearings begin at 10 a.m. and 2 p.m. AIA trials are given designated begin and end times in the Order issued by the adjudicating panel. Typically, they are scheduled to begin between the hours of 9 and 10 a.m. and 1 and 2 p.m. All times refer to the locations and time zones in which they are scheduled.

There are three hearing rooms used by the PTAB in Alexandria, Virginia: Hearing rooms A, B, and D. A morning and an afternoon hearing session is generally scheduled in each hearing room. Each regional office has one hearing room. Hearing sessions in the regional offices may be scheduled in the morning or afternoon. The deputy clerk makes every effort to schedule hearings in all regional office locations. However, as not all regional offices have APJs that represent every technology field, the unavailability of a panel member to physically appear within a regional location may prohibit scheduling a particular hearing in that specific location.

In ex parte appeals, every attempt is made to set an oral hearing date that coincides with the average pendency of on-brief cases. However, some considerations that exist in heard cases (such as paneling and resources) may result in the pendency of heard cases being longer than the average onbrief ex parte pendency. AIA trials are scheduled based on statutory requirements that mandate a specific timeline.

Hearing rooms are reserved by the panels up to a year in advance. Therefore, ex parte appeals are scheduled based on hearing room availability. Once a hearing schedule is completed for the month, it is circulated to the judges for approval. Monthly hearing schedules are completed and uploaded to the webpage in advance.

The current schedule for hearings is located on the PTAB webpage.

Categories
PTAB

PTAB Paneling Hearings

“Paneling” is the process of assigning the case to a panel of judges for adjudication. The PTAB’s Standard Operating Procedure (“SOP”) 1 describes the process by which judges are assigned to panels in all jurisdictions of the PTAB. See PTAB SOP 1. AIA trial hearings, reexaminations, and ex parte appeals paneling functions are completed by staff assigned to the Case Management Branch, located in Alexandria, Virginia, under guidance of the PTAB’s management.

A “panel” is a designated group of members of the PTAB assigned to adjudicate a proceeding. Judges typically are paneled in groups of three, but that may vary in certain cases. See PTAB SOP 1, p. 15. Judges have a wide variety of experience, and care is taken to select panels that have suitable experience to handle the technology at issue in a matter. In addition to technical discipline, paneling decisions also take into account factors including the type of proceeding, existence of related cases, equitable distribution of workloads, and the availability and location of the judge.

Heard ex parte appeal proceedings are generally paneled to the selected judges in groups of six. This grouping of cases constitutes a hearing session. When selecting ex parte appeal cases for paneling, consideration is also given to the location of counsel in an effort to schedule cases in the regional offices. This optimizes use of the hearing rooms in those locations and also provides some travel relief to counsel.

For reexamination proceedings, a panel can be assigned to one case or several cases in one session. Hearings in AIA trials are scheduled as set forth in an Order issued by the adjudicating panel. The Scheduling Order will generally indicate if a panel is available to hold a final hearing in locations other than Alexandria, Virginia, and will provide guidance to the parties on expressing a location preference. A panel may determine to hear several related cases in one session.

Categories
PTAB

REQUESTING ORAL HEARING BEFORE THE PTAB

The PTAB is responsible for conducting trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings; hearing appeals from adverse examiner decisions in patent applications and reexamination proceedings; and rendering decisions in interferences. In accordance with 35 U.S.C. § 6(c), panels of administrative patent judges (APJs) are responsible for adjudicating these cases. Each case shall be heard by at least three members of the PTAB, who shall be designated by the chief judge under authority delegated by the director.

Ex parte and reexamination appeals

When the PTAB receives an appeal, the intake database system assigns an appeal number that is directly associated with the application number. The appeal number can be used internally to track the appeal from start to finish. Generally, ex parte proceedings are decided on a first-in/first-out basis.

In accordance with 37 CFR § 41.47(b) (ex parte and reexamination appeals) and 37 CFR § 41.73(b) (inter partes appeals), a Request for Oral Hearing must be filed as a separate paper (not within the Notice of Appeal or any other paper). The required fee, as set forth in 37 CFR § 41.20(b)(3), must be paid within the appropriate time period as set forth in 37 CFR § 41.47(a) (ex parte appeals) or 37 CFR § 41.73(a) (inter partes reexamination appeals). The time for requesting an oral hearing cannot be extended.

If appellant receives an Order for a Non-Compliant Request for Oral Hearing, the appellant will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted. Such petition is due within 14 days from the Order. See 37 CFR § 41.3(e). The chief administrative patent judge or his/her designee will decide the petition. If the petition is denied, a refund of the fee for filing a request for oral hearing will not be granted.

If the request and fee are not filed as set forth above, the case will be assigned for consideration and the decision will be based on the briefs without an oral hearing. Appeals decided on the briefs are given the same consideration by the PTAB as appeals decided after an oral hearing. See 37 CFR § 41.47(a), § 1.73(c).

AIA trials

For AIA trials, a party may request oral argument on an issue raised in a paper, at a time set by the PTAB. The request must be filed as a separate paper and must specify the issues to be argued. See 37 CFR § 42.70(a). The judge(s) handling the matter will notify the parties of the hearing date and time by order issued by the PTAB.

Categories
PTAB

PTAB Overview

Purpose:

The Patent Trial and Appeal Board (PTAB) has prepared these materials to aid parties and counsel in preparing for and participating in oral argument before the PTAB.

Note: This manual does not supersede or interpret law or regulation governing the legal aspects of the PTAB proceedings. This manual addresses those policies and administrative procedures governing oral hearings before the PTAB and provides practitioners with additional information and instructions to navigate the procedural requirements. This manual is a supplement to the PTAB Trial Practice Guide and is meant to be read in conjunction with that document. This manual does not have the force of law. The PTAB may modify certain guidelines as needed to meet agency or stakeholder needs.

What is the hearings team and how do they support hearings?

The PTAB hearings team falls under the Case Management Branch of the PTAB and is located in Alexandria, Virginia, with contracted support in each regional office location. The hearings team administratively supports all proceedings before the PTAB by sending out hearing notices, scheduling hearings, coordinating court reporting, and providing hearing room support. They coordinate the use of audio-visual equipment and ensure it is in working order to facilitate the use of PowerPoint presentations. The hearings team also coordinates telephonic and video hearings.

Comments/concerns:

The hearings team encourages you to provide any feedback, positive and negative, to ChiefClerkPTAB@uspto.gov. Please limit your responses to concerns that directly support administrative processes. For example, comments should not include any requests regarding your interest in a specific proceeding. We solicit comments on what administrative support we are providing well, what we can do better, and what procedures we could discontinue or implement.