The Patent Office originally published its Trial Practice Guide (“2012 Practice Guide”) in August 2012 alongside the promulgated rules for the newly implemented America Invents Act (“AIA”) trial proceedings, including inter partes review, post-grant review, covered business method review, and derivation proceedings. The 2012 Practice Guide was intended to apprise practitioners of standard practices for the then new trial proceedings as well as to establish consistency in procedure among disparate Patent Trial and Appeal Board (PTAB) panels. Unsurprisingly, the 2012 Practice Guide appeared in large part to reflect the practices used by the Patent Office for pre-existing contested proceedings such as reexaminations and interferences.

While the 2012 Practice Guide appears to have accomplished its intended purpose of providing notice to the various stakeholders, nearly six years of experience with the AIA trial proceedings has highlighted certain deficiencies in the application of the 2012 Practice Guide to AIA trial proceedings. Thus, the Patent Office has begun a planned series of updates to the Practice Guide, with the first such update having been released in August 2018. The August 2018 Practice Guide updates are intended to bring the Practice Guide into conformance with the Patent Office’s current view on best practices. Importantly, these updates do not generally reflect new practices, but rather appear to gather in one place the analysis used by existing PTAB decisions in determining commonly disputed procedural issues.

The August 2018 updated sections of the Trial Practice Guide include:

Guidance on the use of expert testimony (Section I.G.) – This update reflects the importance that expert testimony has taken on in AIA trial proceedings where expert testimony is oftentimes the best, and sometimes the only, evidence on important fact issues. The update highlights the cases, rules, and statutes the PTAB typically cites when resolving disputes over experts qualifications, form of testimony, scope of testimony, and how the testimony is weighed. It further illustrates the PTAB practice of giving broad latitude in submission of expert testimony and that challenges to such testimony should most often be directed to the weight of the testimony rather than its admissibility.

Guidance on existing rules on word count and page limits (Section II.A.3.) – This update reflects the current practice given the codification of word counts (instead of page limits) for most of the principal briefs in AIA trial proceedings. Perhaps most important in this update is a reminder to practitioners that the PTAB prefers concise fact based presentation of arguments with citations to the evidence of record to support the alleged facts. As the PTAB is well versed in patent law, parties should not expend words/pages on explaining general legal principals unless there is a specific dispute with the law as it relates to the facts of the case.

Consideration of various non-exclusive factors in the determination of whether to institute a trial (Section II.D.2.) – This update addresses the potential harassment of Patent Owners through the institution of numerous proceedings against the same patent. In large part, this update echoes the factor-based tests the PTAB has issued through precedential and informative decisions as well as provides reference to statutes, rules, and other court decisions commonly cited by PTAB panels in addressing these situations. The net effect of these decisions has been to reduce instances where a single Petitioner can initiate multiple AIA trial proceedings against the same patent or where different Petitioners are able to initiate separate AIA trials that involve the same issues thereby reducing the number of AIA trials that a Patent Owner may have to defend against.

Providing for sur-replies to principal briefs as a matter of right (Section II.I.) – Perhaps most interesting of the updates is the liberalization of requesting sur-replies to principal briefs. The August 2018 update goes so far as to pre-emptively include dates for such sur-replies in the initial scheduling order. Previously, the granting of sur-replies was case and PTAB panel dependent with no clear guidelines on when a panel would accept or deny such requests. It now appears that such requests will generally be granted which has an important substantive effect in giving the Patent Owner the last word in the principal briefs (or the Petitioner the last word on a motion to amend). This change adapts to the practical reality that once the PTAB has instituted an AIA trial, a Patent Owner must often persuade the PTAB panel that the Final Decision should come out differently than the Institution Decision even though the legal burden technically remains with the Petitioner.

Guidance on the distinction between motions to exclude and motions to strike, and the proper use of each (Section II.K.) – These updates emphasize that in most cases, the PTAB will decide motions to exclude or strike after the oral hearing given the chance the issues raised in these motions may be moot. However, when these motions relate to issues that are unlikely to become moot or that could materially prejudice a party at the hearing then the PTAB may consider a decision prior to the hearing.

Procedures for oral hearing before the Board, including the use of live testimony, sur-rebuttal, and default time for the hearing, and providing for a pre-hearing conference and potential early resolution of issues (Section II.M.) – This final portion of the update to the Practice Guide permits Patent Owners to request the last word at the oral hearing, which aligns with the updated practice of giving the Patent Owner the final principal brief via a sur-reply. The update also permits a PTAB panel to provide guidance on particular issues the PTAB panel would like addressed by the parties during a pre-hearing conference. This guidance can help the parties tailor their argument to the most important issues from the viewpoint of the panel given the limited time allotted for oral hearings.

The August 2018 Practice Guide update is available at the following link: Trial Practice Guide Update August 2018.

The original 2012 Practice Guide continues to be available at the Patent Office website at the following link: Trial Practice Guide August 2012.

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