On August 10, 2018, the United States Patent and Trademark Office published a Federal Register notice announcing updates to the Office Patent Trial Practice Guide (TPG). The TPG was first published in August 2012 to provide guidance to the public about standard procedures the Patent Trial and Appeal Board (“Board”) follows during AIA trials, as well as to promote consistency of procedure among Board panels. The recent TPG updates are intended to reflect refinements of the Board’s practices over time and to elaborate on certain aspects of the Board’s procedures.
Significantly, the recent updates (1) state that sur-replies to principal briefs are permitted as a matter of right, (2) provide for a pre-hearing conference call for early issue resolution, and (3) provide details about oral hearing procedures, including the use of live testimony and sur-rebuttal.
The update also includes revised guidance on expert testimony, considerations in determining whether to institute a trial, the distinction between motions to exclude and motions to strike, and word count and page limits.
Some of the noteworthy updates are highlighted below. Additionally, the Office indicated that further updates to the TPG may be released in the future, as this update revised only certain sections of the TPG.
Sur-replies (revised section II.I)
- Permits sur-replies to principal briefs as a matter of right and indicates that sur-replies will be authorized by the scheduling order entered at institution.
- Allows the patent owner to file a sur-reply in response to the petitioner’s reply to patent owner’s response, replacing the previous practice in which patent owners filed observations on cross-examination testimony.
- Allows a petitioner to file a sur-reply in response to the patent owner’s reply to opposition to amendment.
- Explains that sur-replies (a) may not be accompanied by new evidence, other than deposition transcripts of the cross-examination of any reply witness, and (b) should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.
- Provides that the patent owner may address the institution decision in its sur-reply brief if necessary to respond to the petitioner’s reply. Likewise, the petitioner may also address the institution decision in its reply.
- Specifies that sur-replies to motions are not generally permitted but may be authorized on a case-by-case basis.
This change is significant because the patent owner will now have the “last word” in its sur-reply to the petitioner’s reply. It is also important that the petitioner may address the institution decision, which may indicate that the Board at least initially found grounds in the petition unpersuasive, yet instituted trial on all grounds in view of SAS. If the patent owner did not discuss these issues, it may have been argued that addressing them in the petitioner’s reply exceeds the scope of responding to the patent owner’s response. The Board is also clear that new evidence should not be introduced in replies or sur-replies, but that it is appropriate to “submit directly responsive rebuttal evidence” in support of a submission. Because the Board intends to authorize sur-replies by the scheduling order entered at institution, a party wishing to submit a sur-reply in a pending proceeding may still need to request authorization to do so.
Pre-hearing conference call (revised section II.M)
- Provides for a pre-hearing conference call to be held at either party’s request.
- Explains that the purpose of a pre-hearing conference is to afford the parties the opportunity to preview, but not argue, the issues to be discussed at the oral hearing and to seek the Board’s guidance as to particular issues that the panel would like addressed.
- Discusses other uses for a pre-hearing conference call, including:
- discussing and deciding motions to exclude with respect to a limited number of exhibits;
- discussing and deciding motions to strike; and
- discussing and deciding unresolved issues with demonstrative exhibits.
- Indicates that the Board will preferably rule on pending motions and limited numbers of objections and disputed exhibits during the pre-hearing conference or at least before the oral hearing.
This new procedure may help parties identify which issues are of greatest interest to the Board. It may also narrow the issues, for example, by having the Board decide certain evidentiary issues that may then not need to be discussed at the hearing.
Oral hearing (revised section II.M)
- Specifies that the Board generally expects to provide an hour of argument per side for a single proceeding but that a party may request more or less time depending on the circumstances of the case.
- Absent special circumstances, a petitioner will not be permitted to reserve for rebuttal more than half the total time allotted for argument.
- Permits the Board to grant a patent owner the opportunity to present a brief sur-rebuttal, if requested.
The opportunity for sur-rebuttal mirrors the addition of the patent owner sur-reply brief. In most cases, the patent owner should request this opportunity, as it allows for the “last word” at the oral hearing.
Considerations in determining whether to institute a review (revised section II.D.2)
- In deciding whether to institute the trial, the Board considers:
- whether or not a party has satisfied the relevant statutory institution standard;
- whether various considerations related to “follow-on” petitions, including those set forth in General Plastic, warrant the exercise of the Director’s discretion to decline to institute review under 35 U.S.C. §§ 314(a) and 324(a); and
- whether various considerations, including those set forth in Becton Dickinson, warrant the exercise of the Director’s discretion to decline to institute review under 35 U.S.C. § 325(d) because the same or substantially the same prior art or arguments were previously presented to the Office.
- In addition to the General Plastic factors, events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC, may favor denying a petition.
- In addition to the Becton Dickinson factors, materially changed circumstances or facts and evidence of which the Office was not aware during its previous consideration of the asserted art or arguments may be relevant.
The previous version of TPG Section II.D.2 mentioned only § 325(d), without significant detail explaining how it would be applied. The revised version lists seven non-exclusive factors from General Plastic and six non-exclusive factors from Becton Dickinson that the Board will consider in determining whether to institute trial. Petitioners should consider preemptively addressing applicable factors in the petition, while patent owners should raise these issues in the preliminary response, as the Board is clearly mindful of these options for denying institution. Given the mandate to institute on all challenged claims and all grounds in view of SAS, the Board may use these tools more frequently where it finds substantial portions of a petition are insufficient.
Use of expert testimony (new section I.G)
- Specifies that expert testimony may be submitted with the petition, preliminary response, and at other appropriate stages in a proceeding as ordered or allowed by the panel overseeing the trial.
- Describes a number of situations in which expert testimony may be helpful to the Board (e.g., explaining the technology, establishing the level of ordinary skill in the art, and whether there would have been a reason to combine teachings of certain references).
- Provides that a person must be “qualified in the pertinent art” in order to testify as an expert, but acknowledges that there need not be a “perfect match” between the expert’s experience and the relevant field and a person may not even need to be a person of ordinary skill in the art.
- Warns that parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.
This is an entirely new section of the TPG, which suggests it is an issue the Board encounters frequently and felt the need to clarify. The examples of uses for expert testimony support the express conclusion that “expert testimony may explain ‘patents and printed publications,’ but is not a substitute for disclosure in a prior art reference itself.”
The distinction between motions to exclude and motions to strike (revised section II.K)
- Reiterates that a party may file a motion to exclude evidence if it wishes to preserve objections to the admissibility (not sufficiency) of the evidence.
- Specifies that a party may request authorization to file a motion to strike if it believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply. Alternatively, the party may request authorization for further merits briefing to address newly-raised arguments or evidence.
- Characterizes striking the entirety or a portion of a party’s brief as an exceptional remedy that will be granted rarely.
Although the Board notes that striking a brief or portion thereof is “an exceptional remedy,” the addition of the procedural steps and reasons for granting a motion to strike to the TPG indicate that the Board may be receptive in certain circumstances. Importantly, authorization to file a motion to strike should be requested within one week of the allegedly improper submission.
Word count and page limits (revised section II.A.3)
- Sets forth word count limits for certain submissions and page limits for others.
- Specifies that a party may rely on the word count of the word-processing system used to prepare a paper when making the required certification stating the number of words in the paper.
- Describes possible violations and abuses and how they should be addressed.
The word count and page limits reflect the revisions to 37 C.F.R. § 42.24 that became effective May 2, 2016.
This article appeared in the August 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.