By Catharina Chin Eng and Matt Johnson

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board.

The original TPG was published in August 2012, concurrent with the promulgation of the AIA Trial Rules.  In August 2018, the USPTO published the first update to the TPG.

The USPTO has now issued a second update for certain sections of the TPG to provide further guidance to the public.  This TPG update is not all-encompassing, and there may be further revisions as the USPTO continues to review AIA trial proceedings.

Among other topics, the updated sections of the TPG include guidance on:

  • Factors that may be considered by the Board in determining when additional discovery will be granted
  • The revised claim construction standard to be used in IPR, PGR, and CBM proceedings
  • The submission of testimonial evidence with a patent owner preliminary response
  • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
  • Motion to amend practice
  • Factors that may be considered by the Board in determining whether to grant a motion for joinder
  • Procedures to be followed when a case is remanded
  • Procedures for parties to request modifications to the default protective order

Practitioners should carefully review the new update.  The full text of the July 2019 TPG Update cab be accessed here.

Below are highlights of the updated guidance on petitions, patent owner preliminary responses, and claim construction.  A subsequent post will focus on the update’s guidance on discovery/testimony, motions to amend and motions for joinder.

Implied “Presumption” that More Than Two Petitions Are Not Needed

Based on its experience, the Board finds that one petition should be sufficient to challenge the claims of a patent in most situations.  (2nd Update at 26).  Two or more petitions filed against the same patent at or about the same time may place a substantial and unnecessary burden on the Board and the patent owner, raising fairness, timing, and efficiency concerns.  Id.

Despite these concerns, the Board recognizes that there may be circumstances in which more than one petition may be necessary, (e.g., when the patent owner has asserted a large number of claims in litigation).  In such cases, two petitions may be needed, “although this should be rare.”  (2nd Update at 26).  The Board also finds “it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.”  Id.  These statements suggest that in determining whether to exercise its discretion, the Board will “presume” that more than two petitions against the same patent is unnecessary.

To aid the Board in deciding whether to exercise its discretion under 35 U.S.C. § 314(a) to institute review on more than one petition, the update states that a petitioner should, in its petitions or in a separate paper: (1) rank the petitions in the order in which it wishes the Board to consider the merits, and (2) succinctly explain 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.  (2nd Update at 27).  The patent owner can respond and explain why the Board should not exercise its discretion to review more than one petition.  Id. at 28.

Revised Claim Construction Standard in IPR, PGR, or CBM Proceedings

For petitions filed on or after November 13, 2018, the Board will not use the broadest reasonable claim interpretation standard.  Instead, the Board will construe patent claims and proposed substitute claims by applying the same claim construction standard used by federal courts and the ITC, (i.e., the Phillips standard).  Such construction will be based on the record, taking into account the claim language, specification, and prosecution history as well as relevant extrinsic evidence.  (2nd Update at 14-15).  The Board will also take into account the prosecution history of other prior proceedings before the USPTO, such as AIA proceedings and examination before an examiner.  Id. at 15.  If certain requirements are met, the Board will consider prior claim construction determinations from a civil action or ITC proceeding.  Id. at 15-16.

If it believes that a claim term requires construction, the petitioner must propose a construction for the term and identify support for that meaning.  (2nd Update at 13).  The patent owner may then respond and/or propose additional terms for construction.  Id.  While the petitioner may respond to the claim construction issues raised by the patent owner, the petitioner cannot raise new claim construction issues that were not previously raised in its petition.  Id.

Testimonial Evidence and Patent Owner Preliminary Responses

Previously, the patent owner may rely on new testimonial evidence in its preliminary response if it showed that such evidence was in the interests of justice.  The current update indicates that testimonial evidence may be submitted with a preliminary response without such a showing.  (2nd Update at 19).  If the testimonial evidence creates a genuine issue of material fact, for the purposes of deciding whether to institute, the Board will view the issue in the light most favorable to the petitioner.  This allows the petitioner to have an opportunity to cross-examine the declarant during the trial.  Id.

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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.