United States: USPTO Releases Second Update To PTAB Trial Practice Guide, Part 2

On July 15, 2019, the U.S. Patent and Trademark Office (USPTO) released a second update of certain sections of the Trial Practice Guide to provide further guidance on the rules governing America Invents Act (AIA) trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. In a two-part summary, we highlight some of the more impactful updates set forth in the updated Trial Practice Guide (referred to herein as the update or TPG3).

Motions to Amend

• Pilot Program: the update states that "the motion to amend practice is currently under review by the Office," and notes the Office's recent pilot program for motions to amend issued March 15, 2019. TPG3, 33.
• Evidentiary Standards: a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend. TPG3, 34. The burden of persuasion will instead ordinarily lie with the petitioner to show the unpatentability of proposed substitute claims. The Board itself may also justify a finding of unpatentability by reference to evidence of record in the proceeding, for example, when a petitioner ceases to participate. Id. The Board assesses patentability under the "preponderance of the evidence" standard in view of the entirety of the evidence. Id.
• Contents of Motion to Amend: a motion to amend must "include a claim listing, show the changes being sought clearly, and describe how the original disclosure of the patent and any relied upon prior application supports each claim that is added or amended." TPG3, 35. The update notes that a patent owner "should identify specifically the feature(s) added to each substitute claim and any proposed constructions for new claim terms," and while not required, "patent owners may offer arguments regarding patentability of any proposed substitute claim and may support their arguments regarding patentability with testimony from a technical expert." TPG3, 36. 
• Claim Construction: for any AIA petition filed on or after November 13, 2018, the Board applies "the same standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b)." TPG3, 36. A patent owner may ask the Board to determine that an amended claim and the original claim are substantially identical within the meaning of 35 U.S.C. § 252. TPG3, 36-37.
• Amendments in Derivation Proceedings: a motion to amend claims may be filed by a petitioner or respondent upon a showing of good cause, e.g., where the amendment materially advances settlement between the parties or seeks to cancel claims. TPG3, 37. "The Board expects, however, that a request to cancel all of a party's disputed claims will be treated as a request for adverse judgment."
• Late Motions to Amend: while motions to amend are expected to be filed by the due date for filing a patent owner response, "to reduce the number of issues in dispute, motions to cancel claims will generally be permitted even late in the proceeding, as will motions to amend to correct simple and obvious typographical errors." TPG3, 37.
• Grounds in Opposition to Motion to Amend: petitioners may respond to new issues arising from proposed substitute claims and may introduce new evidence responsive to the amendment. TPG3, 39. A petitioner may raise grounds of unpatentability for substitute claims that it would not otherwise be permitted in its initial petition, such as challenges based on § 101 and § 112.

Motions for Joinder 

• Timing: a party may seek to join a first proceeding by filing a motion for joinder within one month of institution of trial. TPG3, 41-42.
• Board Considerations: the Board weighs factors such as "why joinder is appropriate, whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery." TPG3, 42.
• Discretion to Permit Joinder: 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. TPG3, 42. In cases involving a § 315(b) time bar, when an otherwise time-barred petitioner requests same party and/or issue joinder, the Board may exercise its discretion to permit joinder, but will do so only where fairness requires it and to avoid undue prejudice to a party. The update notes that the Board expects to exercise its discretion to permit such joinder "only in extremely limited circumstances." Id.
• Adjustment of Schedule: "In proceedings in which one or more parties are joined, the Board is permitted to adjust the one-year statutory deadline for issuing a final written decision." TPG3, 43. While the Board "will endeavor to issue a final written decision within one year from the date a trial is instituted," the Board may extend the due date for issuing a final written decision but will do so by no more than six months "[i]f possible." TPG3, 44.

Final Decision

• Timing: for IPR, PGR, and CBM proceedings, the Board will enter a final written decision not more than one year from the date a trial is instituted. TPG3, 44. This time may be extended by up to six months for good cause, and may also be extended in case of joinder. For derivations, the Board expects to follow a similar timeline of providing a decision within one year of institution. TPG3, 45.
• Remands: the update states that the Board "has established a goal to issue decisions on cases remanded from the Court of Appeals for the Federal Circuit for further proceedings within six months of the Board's receipt of the Federal Circuit's mandate." TPG3, 45. The procedure and pace of a remand will vary depending on the circumstances of the case, as outlined in the Board's Standard Operating Procedure 9.
• Initial Remand Conference Call: the update notes that parties in remanded trial cases are to contact the Board within 10 business days after the mandate issues to arrange a conference call with the panel. TPG3, 45-46. Conference calls with the Board should take place within the first month after the mandate issues. TPG3, Before the panel conference call, the parties must meet and confer to propose a procedure on remand. Issues relating to the procedure may include (1) whether additional briefing is necessary; (2) subject matter limitations on briefing; (3) length of briefing; (4) whether the parties should file briefs concurrently or sequentially; (5) if briefs are filed sequentially, which party should open the briefing; (6) whether a second brief from either party should be permitted; (7) the briefing schedule; (8) whether either party should be permitted to supplement the evidentiary record; (9) limitations, if any, on the type of additional evidence that will be submitted; (10) the schedule for submitting additional evidence, if any; and (11) any other relevant procedural issues. TPG3, 46.
• Remand Procedures: after considering the parties' positions, the Board will decide the procedures for remand, such as whether to permit additional briefing and evidence. TPG3, 46. The Board may consider whether the parties already have had an adequate opportunity to address the remand issues, and additional briefing (if permitted) "will normally be limited to the specific issues raised by the remand." TPG3, 47.
• New Evidence on Remand: the update notes that, unless the Federal Circuit's opinion directs the Board to reopen the evidentiary record, a party seeking to do so must show good cause for why additional evidence is necessary. TPG3, 47.
• Oral Hearing on Remand: the update notes that, "[i]n most cases, an additional oral hearing will not be authorized, as the existing record and previous oral argument normally will be sufficient. However, in those situations where new evidence is permitted, the Board may authorize additional oral argument." TPG3, 47.
• Stay of Remand Proceedings: the update notes that, absent good cause, "proceedings on remand generally will not be stayed once the Federal Circuit has issued its mandate, even when a party has petitioned the Supreme Court for a writ of certiorari." TPG3, 48. A party may contact the Board to request authorization to file a motion for a stay of proceedings on remand, and the Board will consider such requests on a case-by-case basis. The Board may consider, among other things, whether the Supreme Court's judgment would impact the Board's decision on remand. Id.

Rehearing Requests

• Content of Request: a party dissatisfied with a decision of the Board may file a request for rehearing. The request must specifically identify all matters that the party believes the Board misapprehended or overlooked and where each matter was previously addressed in a motion, opposition, or reply. The burden for showing that a decision should be modified lies with the party challenging the decision.
• New Evidence: the update states that, "[i]deally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue 'good cause' exists for admitting the new evidence. Alternatively, a party may argue 'good cause' exists in the rehearing itself." TPG3, 49 (quoting Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, Case IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Absent a showing of "good cause" prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.
• Opposing Party Response: the opposing party should not file a response to a request for rehearing absent a request from the Board.
• Decision on Rehearing: the update states that "[t]he Board envisions that, absent a need for additional briefing by an opponent, requests for rehearing will be decided approximately one month after receipt of the request." TPG3, 49.

Protective Order Guidelines

• Purpose: in Appendix B, the update provides guidance on filing motions to seal and the entry of protective orders in proceedings before the Board. TPG3, 41. The parties are encouraged to agree on a stipulated protective order, otherwise the default protective order will be used (default order provided in the update starting at TPG3, 59).
• Timing: "The terms of a protective order take effect upon the filing of a Motion to Seal by a party, and remain in place until lifted or modified by the Board either on the motion of a party for good cause shown or sua sponte by the Board." TPG3, 50.
• Contents: the contents of a protective order should cover the following terms:
  • How to designate the confidential information. TPG3, 51
  • Who is entitled to access the confidential information. Id.
  • How to protect confidential information. TPG3, 52-53.
  • How to treat confidential information (e.g., during filings or exchanges). TPG3, 53-54.
  • How to designate testimony confidential. TPG3, 54-55.
  • Other restrictions imposed by the Board. TPG3, 55.
  • Acknowledging receipt of confidential information. TPG3, 55-56.
  • Filing a proposed protective order. TPG3, 56.
  • Duty to retain acknowledgments. TPG3, 56.
  • Motions to seal. TPG3, 56-57.
  • Other proceedings. TPG3, 57.
  • Disposal of confidential information. TPG3, 57.
  • Modifying the default protective order. TPG3, 57-58.
• Default Protective Order: the update provides a copy of the default protective order. TPG3, 59-64. This protective order is substantively similar to the default protective order from the original Trial Practice Guide, but includes some revisions and additions, including a statement that, "Within 60 days after the final disposition of this action, including the exhaustion of all appeals and motions, each party receiving confidential information must return, or [certify] the destruction of, all copies of the confidential information to the producing party." TPG3, 63.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.