United States: USPTO Releases Second Update To PTAB Trial Practice Guide, Part 1

On July 15, 2019, the U.S. Patent and Trademark Office (USPTO) released a second update of certain sections of the Trial Practice Guide to provide further guidance on the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. In a two-part summary, we highlight some of the more impactful updates set forth in the updated Trial Practice Guide.

Institution of Trial

  • Parallel Petitions: the update states that "one petition should be sufficient to challenge the claims of a patent in most situations." TPG3, 26. The update further provides that, to date, the majority of patents have been challenged with a single petition, and two or more petitions against the same patent may place a substantial and unnecessary burden on the Board and the patent owner. Id. "[M]ultiple petitions by a petitioner are not necessary in the vast majority of cases." Id.
  • Separate Paper Explaining Multiple Petitions: the update authorizes petitioners to file a separate five-page paper to explain why more than one petition is necessary, including providing a "table to aid in identifying the similarities and differences between petitions" and addressing the following:

    • "(1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and
    • (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions." TPG3, 27.
  • Separate Paper Filed With Preliminary Response: the update authorizes patent owners to file a separate five-page paper explaining "why the Board should not exercise its discretion to institute more than one petition." TPG3, 28.
  • Content of Decision on Whether to Institute: the Board "will not institute on fewer than all claims or all challenges in a petition." TPG3, 32. The institution decision will "provide analysis of the strengths and weaknesses of all challenges in the petition to provide guidance to the parties for the upcoming trial." Id. If a petition meets the standards for institution for fewer than all challenges presented, the panel will evaluate whether the entire petition should be denied. Id.

Petition

  • Claim Construction: petitioner "must include a statement identifying a proposed construction of the particular term" or may include a statement that the claim terms require no express construction, and "patent owner may then respond to these positions and/or propose additional terms for construction." TPG3, 13. Petitioner may "respond to any such new claim construction issues raised by the patent owner, but cannot raise new claim construction issues that were not previously raised in its petition." Id. Further, if the Board raises a claim construction issue on its own, both parties will be given an opportunity to respond. Id.
  • Constructions in Related Proceedings: the Board will consider any prior claim construction of an involved claim in a determination in a civil action or ITC proceeding if timely made of record. TPG3, 15. "Thus, as in a district court proceeding, the parties should point out the specific portions of the specification, prosecution history, and relevant extrinsic evidence they want considered, and explain the relevancy of any such evidence to the arguments they advance." Id. Submission of a prior claim construction is "mandatory under 37 C.F.R. § 42.51(b), if it is 'relevant information that is inconsistent with a position advanced by the party during the proceeding.'" Id.

Preliminary Response

  • Testimonial Evidence: testimonial evidence is permitted to be submitted with a preliminary response but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner. TPG3, 19. That said, "[n]ot every factual contradiction rises to the level of a genuine issue of material fact at the preliminary stage of a proceeding." Furthermore, a patent owner may choose not to rely on testimony submitted with the preliminary response by withdrawing the testimony. TPG3, 20.
  • Petitioner Reply: the TPG3 provides that "[s]ubmission of patent owner testimonial evidence at the preliminary stage may warrant granting the petitioner a reply to such evidence." TPG3, 20. However, the Board states that it "does not expect that such a reply will be granted in many cases due to the short time period the Board has to reach a decision on institution." TPG3, 21.

Discovery

  • Standard for Granting Additional Discovery: Parties may agree to discovery among themselves, but if they do not agree, the Board applies different standards in deciding whether to grant additional discovery. TPG3, 7. In IPRs and derivations, the "interests of justice" standard applies, while the "slightly more liberal 'good cause' standard applies in PGR and CBM proceedings." Id.
  • Garmin and Bloomberg Factors Remain Important: In deciding whether to grant additional discovery under the "interests of justice" standard, the Board looks to the five factors set forth in Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012- 00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential). If you are not familiar with these factors, we discuss them on the AIA Blog here, here, and here. The Board applies a similar set of factors under the "good cause" standard, as discussed in Bloomberg Inc. v. Markets-Alert Pty Ltd., Case CBM2013-00005 (PTAB May 29, 2013) (Paper 32) (precedential). TPG3, 8.
  • Case Examples Under Garmin: TPG3 cites several cases applying the Garmin factors to specific situations. TPG3, 8-10. It also provides additional explanation for some of the factors, such as by stating that "contention interrogatories would typically not be permitted." TPG3, 9.
  • Discovery on Real Parties-in-Interest and Secondary Evidence of Non-Obviousness: the Board recognizes that these two areas "frequently" generate requests for additional discovery. TPG3, 11. The Board explains that "[n]arrowly focused requests for additional discovery on these issues may, if appropriate, be permitted." Id. (citing cases).
  • Live Testimony: Live testimony before an administrative patent judge at a hearing or during a deposition may be permitted on a case-by-case basis, but "[l]ive testimony will be necessary only in limited circumstances." TPG3, 12. In deciding whether to permit live testimony, the Board considers the factors set forth in K-40 Elecs., LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (precedential). Id. The "factors may include the importance of the witness's testimony to the case, i.e., whether it may be case-dispositive," and whether "the witness is a fact witness." Id. However, the Board notes that the credibility of experts "often turns less on demeanor and more on the plausibility of their theories," so the Board is less likely to permit live testimony from experts. TPG3, 12-13.

Jurisdiction and Management of the Record

  • Ex Parte Communications Prohibited: the Board prohibits ex parte communications on all substantive matters, requiring all parties to be included on substantive communications unless otherwise authorized. TPG3, 4. But if opposing counsel declines to participate in a hearing or conference call, it is not improper for the hearing or call to proceed with only one party present. In those circumstances, the Board may order "additional safeguards" as a condition for proceeding, "such as the recording of the communication and the entry of the recording into the record." TPG3, 6.
  • Arranging Conference Calls: before arranging a conference call with the Board, "the parties should meet and confer to resolve any disputes." TPG3, 5. If a call is still desired, "parties should be prepared to discuss with a Trial Section paralegal why the call is needed and what materials may be needed during the call, g., a particular exhibit." Id. And if a call proceeds, the parties should notify the Board whether a court reporter will be on the line, and if so, file a copy of the transcript within one week of receiving it. Id.

Public Availability and Confidentiality

  • Protective Orders: the Board may enter protective orders for good cause. Guidelines for proposing a protective order in a motion to seal are in Appendix B. TPG3, 6.
  • Confidential Materials Protected While Motion Is Pending: while a motion to enter a protective order is pending, covered documents or things will be protected until the Board decides the outcome of the motion. TPG3, 6. If the motion is denied and a party has already submitted confidential information under the proposed protective order, the submitting party may ask the Board to expunge the confidential information from the record. Id. Otherwise, the submitted information may become public. Id.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions