The United States Patent and Trademark Office (“USPTO”) published the Office Patent Trial Practice Guide (“Practice Guide”) in 2012 to apprise the public of standard practices before the Patent Trial and Appeal Board (“PTAB” or “Board”) during AIA trial proceedings and to encourage consistency of procedures among panels of the Board. In order to keep the public up to date, the USPTO is releasing updates to the Practice Guide on a section-by-section, rolling basis. The first update to the Practice Guide was released August 2018 and the second update was recently published on July 16, 2019.
The July 2019 update is more extensive than the first update and includes guidance on the following:
Factors that may be considered for additional discovery
In determining when a request for additional discovery will be granted in IPRs and derivation proceedings the Board will apply the “interests of justice” standard and will be guided primarily by the five factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (P.T.A.B. Mar. 5, 2013) (Paper 26) (precedential). For PGR and CBM proceedings the Board will apply the “good cause” standard and will be guided primarily by the factors set forth in Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005 (P.T.A.B. May 29, 2013) (Paper 32) (precedential).
The revised claim construction standard
The guidance was updated to reflect the Board’s previous change from “broadest reasonable interpretation” to the Phillips standard. Additionally, the guidance highlighted that the Board will consider prior claim construction determinations in a civil action or ITC proceeding based on a number of non-exclusive factors, including similarities between the records, timeliness of making the claim construction determination of record, and the finality of the claim construction.
The submission of testimonial evidence with a patent owner preliminary response
A patent owner may submit testimonial evidence in the patent owner preliminary response, but any issue of material fact created by the testimonial evidence will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review. Due to the short time period the Board has to reach a decision regarding institution, few petitioners will be granted leave to file a reply. The petitioner will generally have an opportunity to cross examine the declarant after institution, and in reaching the final written decision, the board will weigh the testimonial evidence on a case-by-case basis.
Information to be provided if multiple petitions challenging the same patent are filed at or about the same time
For parallel petitions challenging the same patent, the updated guidance highlighted that multiple petitions by a petitioner are not necessary in the vast majority of cases. Two petitions may sometimes be necessary in rare cases, such as if the patent owner has asserted a large number of claims in litigation or there is a dispute about priority date requiring arguments under multiple prior art references. However, three or more petitions are likely inappropriate. If a petitioner decides to file multiple petitions challenging the same patent, the petitioner should rank the petitions and explain the differences (preferably including a table), why the differences are material, and why the board should exercise its discretion to institute more than one petition. This additional information can be filed in a separate paper from the petition.
Motion to amend practice
The guidance highlighted the USPTO’s pilot program for motion to amend practice and procedures. The program provides the patent owner with additional motion to amend options including (1) requesting preliminary guidance from the Board in its first motion to amend, and (2) filing a revised motion to amend. Further information on current motion to amend practice may be found at the following website: https://www.uspto.gov/patents-application-process/patenttrialandappealboard.
Factors that may be considered by the Board in determining whether to grant a motion for joinder
The factors that the Board may consider in deciding a motion for joinder include why joinder is appropriate, whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004 (P.T.A.B. Apr. 24, 2013).
Procedures to be followed when a case is remanded
The Board strives to issue decisions on cases remanded from the Court of Appeals for the Federal Circuit within six months. Parties in remanded trial cases should contact the Board within 10 business days to arrange a conference call with the panel and meet and confer in a reasonable and good faith attempt to propose a procedure on remand. Conference calls with the Board should take place within the first month after the mandate issues.
Procedures for parties to request modifications to the default protective order
A protective order is not entered by default but must be proposed by one or more parties and must be approved and entered by the Board. Parties are encouraged to agree on the entry of a stipulated order, but absent such an agreement, the default protective order included in Appendix B of the 2019 update may be entered by the Board. To request modifications to the default protective order, parties may agree to proposed modifications and the Board will generally accept such proposed changes if they are consistent with the integrity and efficient administration of the proceedings.
When a proceeding before the Board involves the same parties and subject matter as a parallel district court proceeding, parties may propose that the protective order entered by the district court be adopted by the Board. However, all terms of a district court protective order that conflict with Board procedures for filing or otherwise handling confidential information should be removed before the proposed order is submitted to the Board.
The full Trial Practice Guide Update is available from the USPTO website at https://www.uspto.gov/TrialPracticeGuide3.