August 15, 2018
The USPTO has released an update to its Trial Practice Guide. The update replaces portions of an earlier version published in 2012 when America Invents Act (AIA) post-grant proceedings were first instituted and reflects continuously evolving trial practices at the Patent Trial and Appeal Board (PTAB) since that time. The current update addresses topics that include use of expert testimony, briefing and other procedures relating to motion practice, factors the PTAB will consider when deciding whether to institute trials, pre-hearing conferences and oral hearings before the PTAB, and the submission of sur-reply briefs. The update also offers a new sample scheduling order, consistent with the current changes.
The updated guide emphasizes that the PTAB has discretion when deciding whether to institute trials. With respect to discretionary denial of institution, the guide codifies factors that were collected in the precedential PTAB decision in General Plastic Co., Ltd. v. Canon Kabushiki Kaisha. Likewise, with respect to situations where the same prior art or arguments were previously presented to the USPTO, the updated guide codifies factors that the PTAB collected in Becton Dickinson & Co. v. B. Braun Melsungen AG.
The update describes modified procedures regarding sur-replies and motions to strike or exclude, which seek to remedy issues associated with new evidence or argument appearing in the first instance in a petitioner’s reply. Sur-replies are now expressly permitted as necessary to respond to arguments a patent owner could not address prior to the reply. Prior versions of the trial practice guide did not provide patent owners with a sur-reply as a matter of right, instead restricting patent owners to observations on cross-examination of the petitioner’s witness. Sur-replies may also address the institution decision if necessary to respond to an argument in the petitioner’s reply, may comment or argue upon any expert report or testimony offered with the reply, and may include the deposition transcript of a petitioner’s expert as new evidence. With these procedures, patent owners should be better able to address new evidence and arguments.
In addition, the updated guide codifies practice relating to the submission of new evidence in reply briefs. It states that a “petitioner may submit directly responsive rebuttal evidence in support of its reply.” It distinguishes between allowable evidence that rebuts the patent owner’s response and improper new evidence or arguments that could have been presented earlier. The update provides specific examples of improper evidence for replies, including “a newly raised rationale to combine the prior art references that was not expressed in the petition” and “newly cited prior art references intended to ‘gap-fill’ by teaching a claim element that was not present in the prior art presented with the petition.”
Other updated guidance involves remedies to address reply and sur-reply briefs that include new evidence, including motions to exclude and motions to strike. Motions to exclude should not “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” Such issues should instead be addressed through a motion to strike all or part of the brief. Specifically, “where a reply clearly relies on a new theory not included in prior briefing, and where addressing this new theory during oral hearing would prejudice the opposing party, striking the portion of the brief containing that theory may be appropriate.” This remedy is tempered, however, because the guide notes that “striking the entirety or a portion of a party’s brief is an exceptional remedy that the Board expects will be granted rarely.” Thus, the alternative approach of requesting sur-reply appears to be favored.
The update also codifies procedures for oral hearings. It establishes one hour of argument per side as the ordinary amount of time, gives petitioner the right to reserve up to half of its time for rebuttal, and gives the patent owner the opportunity to seek PTAB permission to present a brief sur-rebuttal. The guide also describes procedures for pre-hearing conferences and provides additional guidance on the use and labeling of demonstrative exhibits and on considerations related to live testimony. This information should help standardize oral hearings, making the proceedings more consistent across individual panels.
For more information on revisions to the PTAB’s Trial Practice Guide, please contact Fitch Even partner David A. Gosse, author of this alert.
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