Five Former PTAB Judges Reveal How to Succeed at the Board

As a former administrative patent judge (APJ) at the Patent Trial and Appeal Board (PTAB), Finnegan partner Trenton Ward provided valuable insight for attorneys arguing before the PTAB.

Trenton explained that in his time as an APJ, he preferred when attorneys focused on the right issues of the case during oral arguments instead of spending too much time on the facts and  concepts that were already understood. He stated, “I found myself wishing that the attorneys would skip to the key arguments.”

He added that while he looked forward to oral arguments to further investigate cases and would often meet with other APJs before the arguments to coordinate questions to parties involved, he found it frustrating when counsel would not fully address the questions asked. He explained, “Those questions are the most valuable gift during arguments, and attorneys should receive them as such and give full attention and deference to them.”

Trenton also noted that petitioners can change strategies when preparing petitions, but they should make sure the final draft is consistent and reads well. He recalled times as an APJ when the grounds did not line up across various portions of the petition. He cautioned, “Be very clear about what’s being pled and make sure there’s consistency throughout the petition.”

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