The USPTO first published its AIA Trial Practice Guide (“TPG”) in August 2012. The TPG provides practitioners with guidance on typical procedures and times for taking action in AIA trials before the Patent Trial and Appeal Board (“the Board”), including inter partes reviews, post-grant reviews, covered business method reviews, and derivation proceedings. The TPG is also intended to ensure consistency of procedures among panels of the Board.
Earlier this month, the USPTO issued an update to the TPG to incorporate the Board’s current practices and provide further explanation to the public of certain aspects of the Board’s practices. This update accounts for almost six years of the Board’s experience with the program. As this update demonstrates, the USPTO has chosen to issue updates to the TPG on a section-by-section, rolling basis instead of in a single omnibus update addressing all aspects of the original TPG, the reasoning being to “expedite these updates and provide guidance to the public as quickly as possible.” Below is a high-level survey of the sections revised or added in the August 2018 update to the TPG.
Section I.G. (Expert Testimony) is a new section added to the TPG. This section outlines the timing for submitting expert testimony, the qualification requirements for an expert witness, the form and use of expert testimony, and the Board’s discretion to assign weight to be accorded to expert testimony. This new section also clarifies the limitations of expert testimony, stating that “expert testimony may explain ‘patents and printed publications,’ but is not a substitute for disclosure in a prior art reference itself.”
Section II.A.3. (Word Count and Page Limits) specifies word count limits and page limits for the papers filed in AIA trials. This section of the update thereby reflects the amendment to 37 C.F.R. § 42.24 that became effective on May 2, 2016, which replaced page limits with word count limits for petitions, patent owner preliminary responses, patent owner responses, and petitioner replies to patent owner responses. This section also addresses word count certifications (“when certifying word count, a party need not go beyond the routine word count supplied by their word processing program”) and practical guidance regarding compliance with word count limits and challenging violations of word count limits (“the Board will generally accept a party’s certification of compliance with word count limits”).
Section II.D.2. (Considerations in Instituting a Review) discusses the Board’s consideration of various non-exclusive factors in determining whether to institute a trial. Specifically, the update notes that 35 U.S.C. §§ 314(a) and 324(a) provide the USPTO Director with discretion to deny a petition and that the Board will consider, for example, the non-exclusive factors enumerated in General Plastic Co., Ltd. V. Canon Kabushiki Kaisha in exercising that discretion, especially as to “follow-on” petitions. IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19) (precedential). This section also expounds the Board’s practice of exercising its discretion to deny institution under 35 U.S.C. § 325(d), which allows the Board to consider whether the same or substantially the same prior art or arguments were previously presented to the USPTO. The update expressly lists non-exclusive factors considered by the Board in Becton Dickinson & Co. v. B. Braun Melsungen AG in this regard. IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative).
Section II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies) is updated with guidance on the practice of “providing for sur-replies to principal briefs as a matter of right.” It notes that “[t]his sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony.”
Section II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike) includes guidance on the distinction between motions to exclude and motions to strike, and the proper use of each. For example, the update clarifies that a motion to strike, but not a motion to exclude, may address arguments or evidence believed to exceed the proper scope of reply or sur-reply.
Section II.M. (Oral Hearing) provides for a pre-hearing conference call to afford the parties the opportunity to preview and seek the Board’s guidance as to the issues to be discussed at the oral hearing. The pre-hearing conference may also allow for discussion of pending motions to strike, admissibility of exhibits subject to motions to exclude, and unresolved issues with demonstrative exhibits. This section also includes new guidance on sur-rebuttals, demonstrative exhibits, and live testimony for oral hearings before the Board.
Also included in the update is a revised Appendix A (Sample Scheduling Order), which features elements discussed in other sections of the update, such as the provision of a sur-reply.
Of note, the USPTO’s announcement of the update acknowledged that “[t]his TPG update is not all-encompassing, and there may be further revisions as we continue to review AIA trial proceedings.” Nonetheless, this update provides useful guidance for practitioners and aims to clear up inconsistencies that have developed in cases before the PTAB on matters such as motions to exclude and sur-replies.