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 (referred to herein as the update or TPG3).

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.