Patent Owner’s Given New Rights in Trial Practice Guide Update

The Federal Register will issue a notice updating the Patent Trial & Appeal Board (PTAB) Trial Practice Guide on Monday, August 13, 2018. You can find a copy of this notice in the advanced reading room (here). The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for Patent Owners.

The list of changes (below) highlight the most significant in bold (text of changes found here) :

Sections I.G. (Expert Testimony)

This section merely reiterates appropriate use of expert testimony, discusses how qualifications are assessed, proper topics, uses, etc. Nothing really new here, this is just an update summarizing current PTAB practices.

Section II.A.3. (Word Count and Page Limits)

Old Trial Guide still referenced page limits, just an update to remove outdated terminology.

Section II.D.2. (Considerations in Instituting a Review)

Discusses current 325(d) and 314(a) practices under General Plastics and others, summarizes current practices.

Section II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies)

This discussion makes clear that, post-SAS, the Board will permit the petitioner, in its reply brief, to address issues discussed in the institution decision.

More importantly, however, Patent Owner Motions for Observation are now replaced by a sur-reply (new brief given as a as a matter of right):

" Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition to a motion to amend) normally will be authorized by the scheduling order entered at institution. The sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony.

(emphasis added)

Section II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike)

Parties may now request a pre-hearing conference to sort out potentially dispositive issues prior to hearing:

" Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot. Nevertheless, in certain circumstances, the evidence may be so central to the parties’ dispute that mootness is unlikely and early resolution of the motion to exclude may be warranted. In such cases, a party may request a pre-hearing conference with the panel to seek early resolution of a motion to exclude on a limited number of objections. The Board will preferably rule on such a motion during the pre-hearing conference (or after the pre-hearing conference but before the oral hearing), but may also defer ruling until the oral hearing or thereafter.

The update also emphasizes that although a Motion to Strike should be granted on rare occasions, the timing of such a motion is critical:

" Generally, authorization to file a motion to strike should be requested within one week of the allegedly improper submission. The Board will consider such requests on a case-by-case basis.

Section II.M. (Oral Hearing), and

A pre-hearing conference is now an option (mentioned above):

" A pre-hearing conference call will be held at either party’s request and will generally occur no later than three business days prior to the oral hearing. Prior to making such a request, the parties should meet and confer and, when possible, send a joint request to the Board with an agreed upon set of limited issues for discussion. A request for a pre-hearing conference may be made by email and shall include a list of issues to be discussed during the call, including, e.g., identification of a limited number of objections for early resolution as discussed above. The time for making the request will be set in the Scheduling Order, but generally will be required to be sent to the Board no later than the due date set for a reply to an opposition to motion to exclude evidence.

The purpose of the pre-hearing conference is to afford the parties the opportunity to preview (but not argue) the issues to be discussed at the oral hearing, and to seek the Board’s guidance as to particular issues that the panel would like addressed by the parties.

At the oral hearing, a petitioner generally will argue first, followed by the patent owner, after which a rebuttal may be given by the petitioner. Absent special circumstances, a petitioner will not be permitted to reserve for rebuttal more than half the total time allotted for argument. The Board may also permit patent owners the opportunity to present a brief sur-rebuttal if requested. In hearings involving multiple parties or multiple patents, the Board will work with the parties to come up with a format for the hearing that gives the parties a fair opportunity to present their case while preserving the efficiency of the proceedings.

The Board has found that elaborate demonstrative exhibits are more likely to impede than help an oral argument. The most effective demonstrative exhibits tend to be a few presentation slides and a handout or binder containing the demonstrative exhibits. The pages of each exhibit should be numbered and counsel should identify the exhibit numbers during course of oral argument, particularly if the panel includes members participating remotely.

Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence, and should be clearly marked as such. For example, each slide of a demonstrative exhibit may be marked with the words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.

Appendix A (Sample Scheduling Order)

The example Order schedules the new Sur-reply and pre-hearing options above.

More thoughts to follow on some of these changes in future posts.

Scott A. McKeown is an author of the Patents Post Grant.