PTAB Trial Practice: New Trial Guidance, and Precedential and Informative Decisions

The PTAB issued an update to the American Invents Act (AIA) Trial Practice Guide in July 2019. The updated guide provides a roadmap for PTAB proceedings. This is only the second update since the original guidance was issued in 2012 when AIA post-grant proceedings were first implemented. The July 2019 update is based on the PTAB’s precedential and informative decisions, stakeholder feedback, and the evolution of the PTAB’s practices.

The July 2019 update revises several sections of the Guide, including discretionary institution, the change in the claim construction standard and consideration of prior claim constructions patent owner preliminary response (POPR), additional discovery, motions to amend and oppositions, and motions to seal. For example, regarding claim construction the guidance calls for the petitioner to set out any claim construction positions in the petition and emphasizes that the petitioner may respond to any such new claim construction issues raised by the patent owner, but cannot raise new claim construction issues that were not previously raised in its petition.

The PTAB has also been busy designating precedential and informative decisions, particularly in the area of the PTAB’s discretion to institute a trial. In response to feedback on multiple petitions challenging the same patent, the PTAB has issued guidance on non-exclusive factors the Board considers in determining whether to institute trial for a petition. The PTAB has broad discretionary powers under 35 U.S.C. §§ 314(a), 316(b), and 325(d). Factors the PTAB considers include the relationship between petitioners challenging the same patent, the timing of when a petition is filed in relation to other challenges to the patent before the PTAB and other forums, the number of petitions filed and the relative merit of each petition, the requirement under SAS Institute to institute all grounds of challenge if a trial is instituted, and whether the prior art presented in a petition was previously considered by the Office.

Listen as our authoritative panel of experienced PTAB litigation attorneys examine the new guidance for PTAB trial practice and the impact of recently designated precedential and informative decisions.

1. 2019 Updated Guidance
   1. Additional discovery -- factors that may be considered by the Board in determining when additional discovery will be granted
   2. Revised claim construction standard to be used in IPR, PGR, and CBM proceedings
   3. Testimonial evidence with a POPR
   4. Motion to Amend practice and Opposition to a Motion to Amend
   5. Motion for joinder -- factors that may be considered by the Board in determining whether to grant the motion
   6. Motions to seal, and procedures for modifications to the default protective order
   7. Procedures for remand
2. Precedential and Informative Decisions on Discretionary Institution
   1. Expansion of the General Plastic factors
   2. Relationship between petitioners when multiple petitions are filed against the same patent
   3. The impact co-pending litigation may have on the PTAB’s discretion to institute
   4. New ranking requirement for parallel petitions challenging the same patent
   5. Post-SAS implications for institution
   6. Consideration of petitions using prior art that was previously considered by the Office

The panel will review these and other high priority issues:

• Claim construction practice
• Amendment practice
• Joinder practice
• Additional discovery