Updated: Dec 9, 2020
Due to the current COVID-19 pandemic, the United States Patent & Trademark Office "USPTO" announced on March 31, 2020 that its physical offices would be closed to the public until further notice. Since then, oral hearings and in-person meetings scheduled to take place at USPTO offices have been conducted remotely by video or telephone. This announcement dramatically changes how attorneys and their teams prepare for, and argue, their oral hearings. Before COVID-19 it was not unusual for one ALJ to attend remotely, while the parties and remaining judges typically attended in person. Following the closure of the USPTO'S physical office, however, the Board now has new trial orders for remote hearings, requiring attorneys to contact the PTAB to set-up a video hearing.
Between March and the end of May, 2020, Unified Patents in-house counsel argued in at least eight of the video hearings. Unified Patents, LLC is a Washington, D.C. member-based organization whose goal is deterring the number of bad patents assertions in specific technology areas. In an interview with two Senior Paten Counsel from Unified Patents, LLC, Alyssa J. Holtslander and Jessica L.A. Marks, who either argued or served as second chair of five of these eight proceedings, they offer the following advice to other practitioners for video hearing:
Q1: How do the trial orders and equipment set up differ for your oral argument during pre- and post-COVID time?
A & J: Prior to COVID-19, orders regarding the conduct of the proceedings were issued approximately two weeks to one month prior to the oral hearings. After COVID-19, the timing of the orders have been a bit more sporadic. The orders now advise parties about teleconference and video conference options and the logistics for such set up, generally requiring counsel to contact the PTAB for video set-up information.
Although the real order generally stated that the parties must contact the PRAB for video set-up information, the PTAB administrative staff generally contact lead counsel via e-mail before the order's deadline to set up a test connection of the video. In setting up the test, counsel will be sent a link to the telephone number for dialing into the hearing that they can forward to others who may want to attend telephonically.
During the video set-up test, consider having a colleague-perhaps one who will also be attending the hearing-join as well. The colleague will be able to advise on how the video looks (e.g., anything distracting in the background, any unusual sounds, attempts at eye contact considering the position of the speaker's camera).
Q2: What advise do you offer regarding technical preparation for video hearings before the Board?
A&J: If you are the lead counsel or the attorney arguing, its is advised that you conduct testing of your Wifi network to determine that it is strong, and use a Bluetooth headset, microphone and webcam to participate. If it is at all feasible, have the records at hand on a thumb drive or in a desktop folder for ease of access. It is a good idea to be organized and practice a mock video hearing with your team before the actual hearing, if possible.
To preserve bandwidth, consider limiting video participation to the attorney arguing the case. Counsel for each party may dial in to both the audio and video portions and merely turn unneeded cameras off. By connecting Bia video but turning it off, bandwidth is conserved while still allowing that party to quickly turn on their camera if participation is needed.
Arrange your video camera to provide the Board with a portrait view. Even though achieving eye contact using a video camera is practically impossible, at least attempting to with a portrait view is more preferable than, say, a profile view. In our experiences, all of the ALJs have presented in a portrait view. In addition, if you have multiple monitors, consider the positioning of those monitors that you don't need to turn your head to the side to see notes or other information that you need to look at. We have found that it is helpful to have your laptop with its camera in front of you and then another larger monitor positioned directly behind the laptop.
Q3: Should counsel consider requesting more time for oral arguments when presenting at a video hearing?
A&J: Certainly, if you're considering requesting less than an hour for oral arguments for physical hearing, consider requesting more time than you think you'll need. Back-and-forth questions and answers with the Board can take longer over video, so extra time can provide a needed buffer.
With the potential re-opening of the USPTO in the near future, consider requesting alternative times for in-person ad video arguments. For example, you may want to request a 45-minute argument fi via video or a 30-minute argument if in person.
Q4: How should counsel handle confidential records at a video hearing?
A&J: The order will include instructions for notifying the Board is any confidential information is expected during the hearing so that they can close the hearing. In our experience, the hearing will not be divided into public and private portions as may have been done at in-person hearings. Instead, the entire video conference will be closed to the public with no public dial-in information. Be sure to mention it during the test connection to the PTAB staff if your hearing will be closed so they can be sure to set up a non-public connection.
Q5: What do you consider as best practice when discussing demonstratives during video hearing?
A&J: It is important for counsel to clearly identify for the record the slide number of demonstratives and speak clearly when changing to the next slide. Your slides will not be shown as a part of the WebEx video conference, and you will bot have control over which slid the ALJs see. Each ALJ will have local copy of your demonstratives, doubling the importance of calling out slide numbers as you proceed with your argument.
Related to the point above, you will not be able to use a pointer or mouse to draw attention to any point within a slide, so consider how you can verbally indicate to the audience what you wish to emphasize. Consider underlining or highlighting words you will emphasize so you can refer to them during the argument. Such underlining or highlighting may dray an objection from opposing counsel, but in our experience, the Board is unlikely to exclude a demonstrative due to highlighting or underlining. In an abundance of caution, you can always include two demonstratives for the same slide-one with emphasis and one without. That way in the unlikely event that one with emphasis is excluded, you still have the one without emphasis in your deck.
Additionally, though not clear whether this is due to COVID-19 or merely an update in the Board's general operations, the Board has been including in their orders to serve the as-filed demonstratives to PTABHearings@uspto.gov, whereas it was previously served to email@example.com. As always, the orders still generally require the demonstratives be filed, which typically done as a paper and not as exhibit.
Q6: What other advise do you offer for other practitioners if they are presenting their video argument for the first time?
Time Matters. Be sure to have a good way to keep track of your time during your arguments as there are no light to warn you when you're on your last minute.
Practice Video Conference Etiquette. Although this sounds like common sense, it is important to remember that your audience at the video conference is watching what you do. You do not need to stand up when the ALJs are connected. Everyone is merely connected already seated.
Wear work-appropriate clothing. You are presenting your argument, whether it is in person or n a video; make sure that you demonstrate the level of professionalism you would like to portray.
Be on time. If you are presenting, log in early so you may be able to make sure that technology works properly. Don't wait until the last minute. You can always mute your sound turn off your camera after you've joined.
Mute yourself when not speaking. This goes without saying, but noise in the background (i.e., typing, multitasking, shuffling papers, or various activities happening in your household) can be interrupting to the audience. Get in the habit of putting yourself on mute when not speaking.
Covid-19 has changed how we conduct our lives as professionals. We are all doing our part to practice social distancing while serving our clients' interests.
If you have additional questions about your upcoming video/WebEx hearings, the PTAB has made assistance available at PTABHearings@uspto.gov or 571-272-9797.