On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant changes from established practice, but instead encapsulates decisions the Board has designated precedential or informative and other established developments since the last update. The procedures for addressing multiple challenges to a patent, however, are a new and noteworthy addition.

About the Trial Practice Guide

The Trial Practice Guide is intended to apprise the public of standard practices before the Patent Trial and Appeal Board during AIA trial proceedings, including inter partes reviews (IPRs), post-grant reviews (PGRs), transitional proceedings for covered business method patents (CBMs), and derivation proceedings. It was also promulgated to encourage consistent procedures among panels of the Board. The original Trial Practice Guide issued in 2012 with the advent of AIA trials, and the last update published a little under one year ago, in August 2018.

The Second Update

The updated sections of the Trial Practice Guide centralize decisions the Board has designated precedential or informative and other established developments. These sections provide guidance on, among other things:

The Garmin factors considered by the Board in determining when additional discovery will be granted;
Live testimonial evidence at an oral hearing;
The change to the Phillips construction standard to be used in IPR, PGR, and CBM proceedings.
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; and
Procedures for parties to request modifications to the default protective order

New Procedures for Parallel Challenges to a Patent

The section addressing parallel challenges to a patent marks a new addition to the original Trial Practice Guide and its first update. The new section specifically addresses “parallel petitioners challenging the same patent” by the same petitioner and states:

Based on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situtations [sic]. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition.

The update notes, however, that “there may be circumstances in which more than one petition may be necessary,” such as “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” In these circumstances, the update remarks that “two petitions by a petitioner may be needed, although this should be rare.” Any number greater than two should be the rare exception.

The new procedures now require that, when a petitioner files more than one petition challenging the same patent, the petitioner should “in its petitions or in a separate paper filed with the petitions,” limited to no more than five pages, rank the petitions and explain the differences between the petitions, why the differences are material, and why the Board should not exercise its discretion to institute additional petitions when the Board identifies one petition that satisfies the institution threshold of 35 U.S.C. § 314(a).

Future Developments

The USPTO’s press release on the Trial Practice Guide points out that the latest update “is not all-encompassing, and there may be further revisions ….” The last year has shown a sharp uptick in cases designated precedential and informative. And at the AIPLA PTAB Bench & Bar Conference in June 2019, Director Iancu and PTAB leadership pledged to keep this momentum going. As new developments in PTAB practice coalesce, it is likely future trial practice updates will issue that explain how and where any newly designated cases fit under the AIA trial practice umbrella.

Written by: Bridget A.Smith