Evolving PTAB Trial Practice: Navigating Complex Procedural Rules

AIA trial practices of the Patent Trial & Appeal Board (PTAB) have undergone significant change in 2018. From revised trial institution practices post-SAS to increased appellate scrutiny of agency decisions once barred from appeal, best practices before the PTAB are a constantly moving target. But, the most significant changes may be yet to come. With proposed regulatory changes to a district court claim construction standard pending, and expected changes to amendment practices on the immediate horizon, 2018 is shaping up to be the most noteworthy in the PTAB’s short history.

A thorough understanding of this evolving landscape includes not only mastering the unique rules of this forum (including anticipating proposed changes), but also an ever-changing body of Board informative decisions, and growing CAFC precedent. Counsel must understand strategic leverage points presented by these proceedings to maximize both patent monetization potential and settlement opportunity.

1. Preliminary Proceeding Post-SAS
   1. Petitioner Strategy
      1. Claim Construction (Phillips)
         1. Leveraging Markman
      2. Grounds
      3. Timing/325(d)
      4. RPI/Privy
   2. Patent Owner Strategy
      1. POPR
      2. Claim Construction
   3. Litigation Considerations
      1. Stay?
2. Trial
   1. Discovery
      1. Depositions
   2. Claim Construction
   3. Amendment
   4. New Evidence?
   5. Sur-reply
   6. Preserving the record for appeal
   7. Motion practice
   8. Oral Hearing
3. Appeal
4. Legislation/Changes to Come

The panel will review these and other high priority issues:

• New claim construction practice
• Amendment Changes
• Post-SAS practice
• Sur-replies
• New Discovery Opportunities
• Related litigation strategy
• Expected Changes in the horizon