Client Alerts | 07/25/2019

PTAB Releases New Update to the AIA Trial Practice Guide

Team Contact: Sangeeta Shah , Andrew Turner

  • post-grant-review1

The USPTO Patent Trial and Appeal Board (PTAB) recently issued an update to the American Invents Act (AIA) Trial Practice Guide (TPG). The TPG, which was originally published in 2012, was revised in August of 2018 as well (2018 TPG Update) (click here to read our summary of the 2018 updates). The most recent update (2019 TPG Update) reflects recent designated decisions, rule and policy changes for procedural matters, and clarifies PTAB preferences for the trial process. The 2019 TPG Update also includes a new section that describes a new procedural argument for requesting discretionary denial of a “Parallel Petition,” citing a recent non-designated decision in Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., Case IPR2019-00224 (PTAB April 3, 2019) (Paper 10).

Below is a high-level summary of some of the important updates published by the PTAB, which should be considered in the context of your review of the full update:

Conference Calls with the Board: The update reminds parties that they should meet and confer to resolve any disputes before requesting a conference call with the Board. Parties should also notify the Board if they intend to provide a court reporter for a conference call, and if the court reporter is present on the call, the party “shall” file the transcript within a week of receipt. (2019 TPG Update at 5.) 

Discovery: The update sets forth factors that the PTAB may consider when considering requests for additional discovery. Generally, discovery is not allowed in a matter before the PTAB without: a showing under the “interests of justice standard,” for inter partes review (IPR) and Derivation proceedings; and a showing under the more liberal “good cause” standard for post grant review (PGR) and covered business method (CBM) proceedings. The factors to be considered under the “interests of justice” standard are those identified in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential). Similar factors for consideration of such requests under the “good cause” standard for are set forth in Bloomberg Inc. v. Markets-Alert Pty Ltd., Case CBM2013-00005 (PTAB May 29, 2013) (Paper 32) (precedential). The update indicates that a party seeking authorization to file a motion for additional discovery should be prepared to address the pertinent factors during a conference call with the Board. The PTAB highlighted that additional discovery has generally been granted in situations involving real parties-in-interest issues and regarding secondary evidence of non-obviousness. (2019 TPG Update at 7-11.)

Live Testimony: The update indicates that live testimony, e.g., at an oral hearing, will be necessary only in limited circumstances and requests for live testimony will be approached by the Board on a case-by-case basis. The Board is more likely to grant such a request when the witness provided a declaration in the proceeding than when the witness did not provide a declaration. (Compare K-40 Elecs., LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (precedential) with DePuy Synthes Prods., Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (precedential)). (2019 TPG Update at 12-13.)

Claim Construction: The update makes clear that the claim construction standard to be applied in AIA trial proceedings has shifted from the “broadest reasonable interpretation” to the standard applied in federal courts and the ITC (i.e., the standard established in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny). The PTAB describes the Phillips standard and the procedure for raising and responding to claim construction arguments during a proceeding, as well as examples of the types of information that can be relied upon to support constructions. When there is a parallel district court action or ITC proceeding, the PTAB expects to be notified of any claim construction determination promptly, i.e., “as soon as that determination becomes available.” (2019 TPG Update at 13-18.)

Patent Owner Preliminary Response: The PTAB clarifies that testimonial evidence may be submitted with a patent owner preliminary response. If a trial is instituted, a patent owner may elect to withdraw testimony submitted with a preliminary response, and if not, the petitioner will have an opportunity to cross-examine the declarant. Once a trial is instituted, the PTAB may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response. (2019 TPG Update at 18-21.)

Institution of Trial – Considerations in Instituting a Review

  1. Follow-On Petitions: The update identifies the factors from General Plastics that guide whether or not to institute a “follow-on” petition, and what types of additional information may also be relevant to the PTAB’s discretionary decision to institute. See General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19) (precedential). The update also references recent designated decisions that: extend the General Plastic Factors to different, but related, petitioners, see Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11) (precedential); and deny institution based on the advanced state of parallel litigation. See NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8) (precedential). (2019 TPG Update at 22-26.)
  2. Parallel Petitions: In the event Petitioner files multiple petitions at or about the same time challenging the same patent, the update states that a petitioner should identify: (1) a ranking of the petitions in the order in which it wishes the PTAB to consider the merits, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the PTAB should exercise its discretion to institute additional petitions. See Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., Case IPR2019-00224, -00225, -00226, -00227, -00228, -00229 (PTAB April 3, 2019) (Paper 10). The PTAB explains that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “[t]wo or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” (2019 TPG Update at 26-28)

Motion to Amend and Opposition to a Motion to Amend: The update addresses motion to amend procedure and describes the new pilot program for motion to amend practice and procedures that provide the patent owner with additional options regarding the motion to amend process. These options allow patent owners to (1) request preliminary guidance from the PTAB in its first motion to amend, and (2) file a revised motion to amend. The update also touches upon due dates, evidentiary standards, and briefing requirements relating to motions to amend. The update also reinforces that a petitioner in an IPR proceeding may raise additional grounds of unpatentability, including § 101 and § 112, as to proposed substitute claims. (2019 TPG Update at 32-36.)

Sur-Replies: Last year, the 2018 Update expanded the “Reply to Patent Owner Response and Reply” Section to include the Reply to Petitioner Opposition to Motion to Amend and Sur-Replies. The 2019 Update deletes all references to sur-replies in this section, and does not create a new section describing them, which seemingly leaves sur-replies less defined. (Compare 2018 TPG Update at 14-15 with 2019 TPG Update at 39-40.)

Joinder: The update identifies the factors it will consider when evaluating a motion for joinder. Kyocera Corp. v. Softview LLC, Case IPR2013-00004 (PTAB Apr. 24, 2013), slip op. at 4 (Paper 15). The update also indicates that joinder issues may prompt the Board to adjust the one year statutory deadline for issuing a final decision: “[i]n cases where the joined party adds additional claims, grounds, evidence, or arguments that complicate the proceeding, however, it is more likely that the Board will adjust the deadline for issuing a final written decision.” (2019 TPG Update at 41-44.)

Remand Procedures: The update outlines procedures to be followed when a case is remanded from the Federal Circuit, as previously described in the PTAB’s Standard Operating Procedure No. 9 that was released in 2017. The PTAB’s stated goal is to resolve remand determinations within six months. To help facilitate the speedy resolution of such matters, the PTAB encourages parties to schedule a telephone conference with their panel within 10 days of the remand order to discuss process, deadlines, and associated issues. (2019 TPG Update at 45-48.)

Rehearing Requests: The update recommends requesting permission from the Board before filing new evidence with a rehearing request so that the party could argue “good cause” exists for admitting the new evidence prior to filing. (2019 TPG Update at 48-49.)

Protective Orders: The update clarifies that a protective order is not entered by default, rather it must be proposed by one or more parties and approved by the Board. The update outlines procedures to request modifications to the PTAB’s default protective order. The update states that the PTAB will generally accept proposed changes to the default protective order (agreed to by the parties) to the extent they are “consistent with the integrity and efficient administration of the proceedings.” (2019 TPG Update at 6, 57-58.)

You can access the full August 2019 Trial Practice Guide Update here. If you have any questions or would like to discuss the changes in more detail, please contact Sangeeta Shah or Andrew Turner.

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