The USPTO Patent Trial and Appeal Board has issued a revised AIA Trial Practice Guide, updating the original guide published in 2012. The revised TPG, which was published in the Federal Register on August 13, 2018, provides updated guidance on practice and procedure before the PTAB in inter partes review, post grant review, and covered business method matters.
The updated TPG incorporates rule changes implemented by the PTAB since the original guide, which was written at the time of initial agency rulemaking for rules governing AIA trials. Those changes include the 2016 rule changes concerning word counts in petitions and the use of expert declarations filed with patent owner preliminary responses.
The revised TPG also addresses procedural changes that may not have been widely appreciated by parties in AIA proceedings. These include:
- A collection of the factors the Board may consider in denying institution, including the factors bearing on institution in “follow-on” petitions, stated in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR 2016-01357, Paper 19 (PTAB Sept. 6, 2017)(precedential), and factors to be applied in instituting based on issues previously considered during examination, as set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017)(informative). TPG at 9-10. See “PTAB Designates Two New Informative Decisions Addressing Its Discretion To Deny Review Under 35 U.S.C. § 325(D) Based On Prior Examination” [https://www.brookskushman.com/news/client-alerts/ptab-designates-two-new-informative-decisions-addressing-its-discretion/]
- Updated guidance on a patent owner sur-replies, including that while sur-replies are “not generally permitted,” they may be allowed to address the institution decision if needed to respond to the reply. “This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony.” TPG at 14.
- Procedures for an optional pre-hearing conference with the Board to “preview (but not argue) the issues to be discussed at the oral hearing, and to seek the Board’s guidance as to particular issues that the panel would like addressed by the parties.” The pre-hearing conference will permit the Board to rule on some pending motions prior to the oral hearing. TPG at 19-20.
- A guideline that, at oral hearing, “[a]bsent special circumstances, a petitioner will not be permitted to reserve for rebuttal more than half the total time allotted for argument.” TPG at 20. This rule will discourage “sand-bagging” by saving substantive points until the petitioner’s rebuttal.
The August 2019 Trial Practice Guide Update is available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf.