On June 7, 2017, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the IP Strategy Summit in Philadelphia, PA. Michael was a member of a panel consisting of Matthew Blischak of Teva Pharmaceuticals and Leon Lum of Novo Nordisk. The panel discussed strategy for post-issuance proceedings in the U.S. Patent and Trademark Office.
Based on his litigation experience with patents in all forums, Michael stressed the need to communicate and persuade administrative law judges on a technical level because they approach post-issuance proceedings with their technical training in mind and are therefore differently situated than an Article III judge or a jury. As Michael explained, any decision maker, whether judge or jury, needs to be persuaded based on their own life experiences and life story. Since patent office judges are technically trained, they approach technical validity issues with their technical training in mind and therefore they need to be persuaded from a technical perspective as to whether a reference does or does not disclose a patent claim limitation.
Michael also emphasized that because post-grant proceedings are before technically trained judges, expert testimony and second considerations play a different role in post grant proceedings than in Federal Court litigation. Technically trained judges consider this evidence through the lens of their technical training. For example, a technically trained judge may be an expert in a patent’s technical field. Therefore, technical background information that helps to explain the patented or prior art technology may be helpful in persuading an administrative judge regarding whether a reference does or does not teach a claimed limitation because in this instance the case is being argued to an expert in the technical field, as opposed to a jury that does not have the same technical expertise.
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