The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.

The July 2019 update modifies the following general procedures:

  • Prohibition on Ex Parte Communications (I.A.2)
  • Protective Orders (I.E.4)
  • Additional Discovery (I.F.2)
  • Live Testimony (I.F.5)
  • Protective Order Guidelines (Appendix B)

In keeping with the public notice aspect of Patent Office proceedings, a protective order will not be entered by default. Instead, a party must propose a protective order in a motion to seal, and the Board may approve and enter the protective order upon a showing of good cause. The purportedly confidential information will be protected pending a decision on the motion, and, if the motion is denied, the moving party will have the opportunity to have the submitted information expunged from the record.

With respect to requests for additional discovery, the update provides a lengthy discussion of the “interests of justice” standard applied in IPR and derivation proceedings. Specifically, the update explains the five factor test set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) as well as subsequent PTAB jurisprudence. Additional discovery may be granted to identify real parties-in-interest and secondary evidence of non-obviousness when requests are narrowly focused.

The July 2019 update also substantially revises the following aspects of motion and petition practice:

  • Claim Construction (II.B.6)
  • Patent Owner Preliminary Response (II.C)
  • Considerations in Instituting a Review (II.D.2)
  • Content of Decision on Whether to Institute (II.D.3)
  • Motions to Amend (II.G)
  • Petitioner Opposition to an Amendment (II.H)
  • Petitioner Reply to Patent Owner Response and Reply to Petitioner Opposition to Amend (II.I)
  • Other Motions (II.J)
  • Final Decision (II.O); and
  • Rehearing Requests (II.P)

Most notably, the PTAB has revised the claim construction standard used in IPR, PGR, and CBM proceedings, and now applies the same Phillips claim construction standard used in civil actions arising under 35 U.S.C. § 282(b). Accordingly, any prior claim construction determination by a federal court or the ITC should be submitted to the PTAB as soon as available.

The update also requires Petitioner to either (1) provide an express claim construction with intrinsic and/or extrinsic evidentiary support, if a construction is necessary, or (2) state that no construction is necessary. Patent Owners may respond with their own constructions in either case, and Petitioners may only address newly construed terms in their Reply.

Patent Owners are allowed to submit testimonial evidence with a preliminary response, however factual disputes will be viewed in a light most favorable to the Petitioner for purposes of deciding whether to institute a review. The submission of testimonial evidence also may open the door to a Petitioner’s reply at that stage.

The update also includes a lengthy discussion of the Board’s increasingly skeptical view of multiple petitions challenging the same patent. Specifically, the update states that “one petition should be sufficient to challenge the claims of a patent in most situations.” Even though the Board may accept multiple challenges, it places the burden on the petitioner to explain why multiple petitions are necessary and rank the petitions in its preferred order. The update also sets forth the factors the Board will consider in deciding to institute a review—factors that the Board first enumerated in General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. 15–16 (PTAB Sept. 6, 2017).

The update also discusses the motion to amend Pilot Program currently underway at the PTAB. Under the Pilot Program, a Patent Owner now may (1) request preliminary guidance from the Board in a first motion to amend, and (2) file a revised motion to amend. In addition, although a Patent Owner does not bear the burden of persuasion with respect to the patentability of amendment claims, a Patent Owner can increase the likelihood of a motion to amend by providing arguments supporting patentability of the proposed amended claims.

More information about the July 2019 update is available here.