Womble Bond Dickinson’s Brent Babcock was one of a small and select group of IP litigators selected by IAM Media to offer advice on inter partes review proceedings before the Patent Trial and Appeal Board. An excerpt from this roundtable was published by IAM Media on May 12, with the entire roundtable to be published this summer.
“For both petitioners and patent owners, my number one piece of advice can be summarized in one word: focus. Lawyers are taught to spot issues in every scenario that they encounter – indeed, in law school, students are rewarded for spotting as many issues as possible. But in real-world practice, lawyers often have difficulty selecting which issues to pursue and which to jettison. Compounding this difficulty is their typically risk-averse nature, making them reluctant to discard any argument for fear that taking anything off the table could someday be seen by someone as a mistake. Accordingly, lawyers tend to take a shotgun approach to their arguments before the PTAB, whereas the board almost always prefers a more precise rifle-shot approach. Lawyers and their clients, in careful consultation with each other, need to objectively evaluate the strengths and weaknesses of every argument. A weak alternative argument will often be probed by the board and a feeble defense by counsel can lead to a serious loss of credibility, jeopardizing the stronger principal argument. The board does not like a so-called ‘spaghetti on the wall’ approach, with counsel presenting myriad interwoven arguments, effectively asking administrative patent judges: “Which argument do you like the best?” The board’s response is generally something like: “It’s your case, you know the arguments better than we do, so you tell us your best argument, and we’ll tell you if we agree.” In that same vein, the board has counselled practitioners to pick their one or two best arguments and go with those. If your best argument does not win, then your weaker arguments would not have won either.”
Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.