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ARTICLE · 14 AUGUST 2018

Practical Tips From The Judges' Panel At The PTAB Judicial Conference

Jones Day
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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office ("USPTO") hosted a Judicial Conference by the Patent Trial and Appeal Board ("PTAB").

United StatesIntellectual Property
S. Christian Platt
S. Christian Platt
Michael A. Lavine
Michael A. Lavine
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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office ("USPTO") hosted a Judicial Conference by the Patent Trial and Appeal Board ("PTAB"). During the conference, a panel of Administrative Patent Judges provided helpful, practical tips to practitioners with matters before the PTAB. Judge Georgianna Witt, from the Dallas Regional Office, moderated a panel consisting of Judges Kevin Turner, Christa Zado, Tina Hulse and Kevin Trock, all based in the Silicon Valley Regional Office. The panel covered a variety of issues, including both written and oral advocacy before the PTAB.

Written Advocacy: Tips on Presenting Compelling Arguments

  1. Emphasize Factual Issues. On written advocacy, the judges emphasized that addressing factual issues is of critical importance. Unlike issues related to claim construction, which may be reviewed by the Federal Circuit de novo, factual determinations reached by the PTAB are reviewed by the

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