By Catharina Chin Eng and Matt Johnson

Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction.  This post highlights the update’s guidance relating to discovery/testimony, motions to amend and motions for joinder.

Factors Considered in Determining Whether to Grant Additional Discovery

The update observes that two areas where additional discovery is frequently sought are identifying real parties-in-interest and secondary evidence of non-obviousness.  (2nd Update at 11).  There are two standards for determining whether to grant additional discovery:  (1) the “interests of justice” standard used in IPRs, and (2) the slightly more liberal “good cause” standard used in PGRs and CBMs.  (2nd Update at 7-8).  In IPRs, the Board will be primarily guided by the five factors set forth in its decision in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential).  These factors include whether the requesting party already possess evidence “tending to show beyond speculation that in fact something useful will be uncovered.”  For PGRs and CBMs, the Board will consider factors similar to those in Garmin and set forth in Bloomberg Inc. v. Markets-Alert Pty Ltd., Case CBM2013-00005 (PTAB May 29, 2013) (Paper 32) (precedential).

When Live Testimony Will Be Permitted

Live testimony will be permitted in limited circumstances where the Board considers the demeanor of a witness critical to assessing credibility.  (2nd Update at 12).  For example, such testimony may be allowed where derivation is an issue or misconduct is alleged to have occurred.  Such testimony has also been allowed where the witness was an inventor providing declaration testimony to antedate references relied on by the petitioner to challenge patentability.  Id.  The Board may consider the factors in its decision in K-40 Elecs., LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (precedential).  These include whether the witness’s testimony may be case-dispositive and if the witness is a fact witness.  Id.

Motion to Amend Practice

The update references the USPTO’s March 15, 2019 notice of the pilot program for motion to amend (MTA) practice, which provides the patent owner with additional options regarding the MTA process.  (2nd Update at 33).  In accordance with the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the burden of persuasion ordinarily will lie with the petitioner to show that the proposed substitute claims are unpatentable by a preponderance of the evidence.  Id. at 34-35.  In addition, the update provides guidance regarding the contents of the MTA and the opposition and reply relating thereto.  Id. at 35-40.

Consideration of Motions for Joinder

The update sets for factors that the Board may consider in deciding a motion for joinder.  (2nd Update at 42).  These include why joinder is appropriate and how the cost and schedule of the first proceeding will be impacted if joinder is granted.  Id.

Furthermore, based on its discretion under 35 U.S.C. § 315(c), as discussed in Proppant Express Invs. v. Oren Techs., Case IPR2018-00914, slip op. at 3–4 (PTAB Mar. 13, 2019) (Paper 38) (precedential), the Board has discretion to join a petitioner to a proceeding in which it is already a party and to allow joinder of new issues into an existing proceeding.  (2nd Update at 42).  The Board may consider the existence of a time bar under 35 U.S.C. § 315(b) among other factors in deciding to exercise such discretion.  Nevertheless, the Board expects to exercise such discretion only in extremely limited circumstances, where fairness requires it and to avoid undue prejudice to a party, (e.g., actions taken by a patent owner in a co-pending litigation such as certain late additions of newly asserted claims).  Id. at 42-43.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.