TAKEAWAY: The PTAB has updated sections of its AIA Trial Practice Guide, accounting for nearly six years of experience conducting trials at the USPTO.
This past August, the Patent Trial & Appeal Board (PTAB) published updates to several sections of its AIA Trial Practice Guide (TPG). The original TPG, published in August 2012, was developed with the intent to bring consistency among panels and inform potential petitioners and patent owners of the PTAB’s expectations for the then-new trial procedures. After several years of experience conducting AIA Trials, including inter partes reviews, post-grant reviews, and covered business method reviews, the PTAB has updated several sections of the TPG in an effort to provide guidance on practices it has seen, and to further streamline its proceedings. Some updates appear to address what may have been considered commonly occurring deviations from the original AIA trial procedures, while others are more directed to form (e.g., reining in time and word limits that have gotten more expansive since the passage of the AIA).
One notable update is the addition of explicit guidance regarding various non-exclusive factors that may contribute to the determination of whether to institute a trial. In the updated section on institution decisions, the PTAB reaffirms the Director’s discretion in instituting review and lists the non-exclusive factors for determining whether to institute a review laid out in General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357 (Sept. 6, 2017) (precedential) and Becton Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (Dec. 15, 2017) (informative). These factors, taken as a whole, consider the in-court and out-of-court actions of the Petitioner and the potential for abuse of AIA Trials in the determination of whether to institute. The adoption of these factors in the updated AIA TPG reflects the PTAB’s intent to transparently address potential abuses of the system while maintaining efficiency of PTAB trials.
Another updated section formalizes the option for a pre-hearing conference with the Board and outlines instances when such a conference may be appropriate. Previous procedure relied upon pre-hearing conference calls between parties and the panel on an ad hoc basis. The express guidance on when pre-hearing conferences may occur and what may discussed during them reflects the desire of the PTAB to efficiently resolve disputes and provide predictable expectations for parties to forecast costs and opportunities.
Although noteworthy, these updated sections represent only a portion of the PTAB’s AIA Trial Practice Guide update. Other updated sections include guidelines clarifying the appropriate scope of expert testimony and formalization of sur-replies as a matter of right.