Ten Tips for Writing Winning PTAB Briefs

Much ink has been spilled over the grim odds facing patent owners in inter partes review (IPR) proceedings. For the October 2023-October 2024 period, institution rates by patent have reached 74% (up from 66% in 2021) and, once instituted, 84% of final written decisions result in some or all challenged claims being found unpatentable.

But patent owners may improve significantly upon these odds. In this regard, clear, compelling, and rigorously supported briefs are the most important tool for achieving success in the Patent Trial and Appeal Board (PTAB). Below are ten tips for crafting winning briefs.

1. View Your Arguments Like a Judge

Being the best writer in the world will not do you much good if you do not have compelling arguments to present. To be sure, advising attorneys to present good arguments is a bit like reminding them to breathe, and yet, IPR briefs are often filled with spurious arguments.

To some extent, this is a function of attorneys trying to pull one over on the PTAB and/or its opponents. In other instances, a weak argument may be all you’ve got. In the main, however, weak arguments are a function of attorneys failing to subject their own arguments to sufficient scrutiny.

Aim to only present arguments that you would accept if you were the judge. Even then, have the most cynical attorney in your firm try to poke holes in it. If he or she can logically dismantle an argument within five minutes, your opponent and/or the judges will likely see those same flaws too.

2. Have Sympathy for the PTAB

Sympathy for the “death squads,” as Judge Rader put it 11 years ago? While many patent owners view the PTAB with contempt, you will do your clients no favor by carrying that mindset into IPRs.

Better to focus on the PTAB’s virtues. An average PTAB judge is likely to know the nuances of validity law far better than the average district court judge. Moreover, the arguments presented are likely to receive far greater scrutiny (for better or worse) than they would before a federal district court judge or jury. Thus, if you have a good, compelling argument, it is not likely to get lost in the shuffle.

The PTAB judges further must manage large caseloads with hundreds of pages of briefing on inherently difficult material, much of it poorly written. Your clients will be far better served by making the lives of the judges as easy as possible by submitting clear and compelling briefs.

3. Keep It Simple, Stupid

Patent law is arcane and IPRs are about as complicated as it gets. The judges must keep in mind numerous claims, the intrinsic and extrinsic record, explicit (and implicit) claim construction positions, prior art grounds, legal nuances, and more.

But complicated material does not call for a complicated brief. Instead, the goal should always be to present a brief that can be readily understood in a single read through. Follow the basics. Sentences should be as concise as possible. Each paragraph should be about one thing, and the paragraphs should flow seamlessly together. A well-crafted brief requires multiple rounds of revisions, even from seasoned writers.

4. You Are Not Agatha Christie

A brief is not a mystery novel, a journey of discovery where the reader learns the point of it all at the end. The judges should never be in the position of wondering why they are reading a particular sentence or paragraph.

Instead, every argument should begin with a short clear statement indicating where the argument is going, e.g.:

Each of the claims includes the limitation x. Petitioner contends that limitation x is disclosed by the y structure in the Smith reference. Petitioner’s argument fails because z.

5. Keep It Self-Contained

The brief should be entirely self-contained. This means that a judge should be able to read a brief without needing to look at anything else, including the patent-at-issue, the prior art reference, the petition, a declaration, or a deposition transcript. Further, each argument should generally also be self-contained, that is, not dependent upon reviewing another section of the brief. To this end, arguments should be rigorously supported by quotations from the record, citations to legal precedent, and the use of annotated figures.

6. Know, and Use, Precedent to Your Advantage

I recall some guidance from the patent office some years ago discouraging the citation of authority in briefs because PTAB judges are already well-versed in the law. To be sure, there are some legal propositions that are so basic that they do not require a citation. That said, most arguments should be rooted in one or more well-supported legal propositions. If you present your argument like a logical proof, citing caselaw will clearly convey to the panel the precise legal hook for your argument. The judges are not mind readers and citing authority, even if known to the judges, will help them follow your reasoning.

7. Don’t Make Your Life More Difficult

Life is hard enough in the PTAB; don’t make it harder. To that end, recall that the petitioner bears the burden of proof on most issues and, generally, must carry its burden of proof in the petition. Phrase your arguments wherever possible as the petitioner failing to carry its burden without opening the door to new arguments. Consider two formulations of an argument:

• “Petitioner fails to prove the Smith reference discloses x. They contend that the y structure in the Smith reference discloses x but fail to prove it.”
• “The Smith reference does not disclose x.”

Here, the former is materially better as it frames the question in terms of whether the petitioner, in the petition, carried its burden of proof. The latter, however, asserts that Smith as a whole does not disclose x, arguably opening the door in the petitioner’s reply to explain why the patent owner’s assertion is wrong. This may permit the petitioner to rely upon different areas of Smith not cited in the petition. Better to hold the petitioner to its burden and keep it confined to the argument presented in the petition.

8. Learn From Your Mistakes

If you talk to PTAB attorneys representing patent owners in IPRs, you’re likely to hear a lot of gallows humor and kvetching about the fundamental unfairness of IPRs. This mentality, however, will not do you or your clients any favors.

Wherever you get a setback from the Board, e.g., an institution decision, a final written decision loss, etc., you should first and foremost consider what you could have done differently to avoid that outcome. Relatedly, if you receive criticism on a draft or mock argument from, e.g., a client, colleague, or co-counsel, you should operate under a rebuttable presumption that the criticism has some merit. The best mistakes are the ones avoided in the first place.

9. Protect Your Credibility

Practitioners should jealously safeguard their credibility. Avoid weak arguments, overstatements, inaccuracies and make sure everything you say is well-supported. Additionally, make sure your briefs are perfectly formatted and without typos.

10. Be Civil

In most cases, you will find some argument the other side makes to be ridiculous. But snark, rudeness, and ad hominem attacks are not viewed favorably. Present your arguments strongly and forcefully and do not mince words, but keep it civil.

Join the author and other attendees for more tips on navigating the PTAB at IPWatchdog’s PTAB Masters 2025. Register to attend here.