PTAB Publishes Update to AIA Trial Practice Guide

by Kenneth Darby and Karan Jhurani

On July 15, 2019, the USPTO published its second update to the AIA Trial Practice Guide (the "Trial Guide Update" or the "Guide"). The Trial Guide Update addresses a wide variety of topics ranging from the filing of a petition to the re-opening of proceedings following remand from the Federal Circuit. Noteworthy topics include:

• Factors that may be considered by the Board in determining when additional discovery will be granted;
• The revised claim construction standard to be used in IPR, PGR, and CBM proceedings;
• The submission of testimonial evidence with a patent owner preliminary response;
• Information to be provided by the parties if there are multiple contemporaneous petitions challenging the same patent;
• Motion to amend practice;
• Factors that may be considered by the Board in determining whether to grant a motion for joinder;
• Procedures to be followed when a case is remanded; and
• Procedures for parties to request modifications to the default protective order.

Below, we summarize selected portions of the Trial Guide Update and offer commentary regarding the same.

Claim Construction (p.13)

Beyond noting the widely publicized conversion to the Phillips standard of claim construction, the Trial Guide Update provides several points of guidance to PTAB practitioners, some well-known, others less so. For example, the Guide reiterates that a petition must include a proposed construction for any term the petitioner believes warrants an express interpretation by the Board. Alternatively, the petitioner may include a statement that no claim terms require express interpretation. But claim construction issues left unsaid in the petition cannot be addressed later, unless the patent owner raises them. If the Board raises a claim construction issue sua sponte, it will afford the parties an opportunity to respond before issuing a final written decision.

While offering an express construction is generally optional for petitioners, it is mandatory "[w]here claim language may be construed according to 35 U.S.C. 112(f)." Failure to do so could be considered violative of 37 C.F.R. 42.104(b)(3) and result in denial of institution. The Trial Guide invites (but does not require) parties to address why, under Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 112(f) should or should not apply to particular limitations.

Consistent with the revised version of 37 C.F.R. 42.100(b), the Trial Guide Update notes that prior claim constructions from a district court or the ITC will be "considered" by the Board, if timely made of record. As to the weight attributed to such constructions, the Board will take into account (among other things): (A) the degree of similarity between the record leading to the prior construction and the record at the PTAB; and (B) whether the prior construction is final or interlocutory. Submission of a prior claim construction is mandatory under 37 C.F.R. 42.51(b) if it is "inconsistent with a position advanced by the party during the proceeding." The Guide also expresses the Board's willingness to consider prior statements made by patent owners and petitioners in other proceedings that are relevant to claim construction. This may encourage parties to avoid or account for taking inconsistent positions on the meaning of key claim terms. Notably absent from the Guide is any indication as to how the Board will address claim limitations alleged to be indefinite by defendant-petitioners in district court and simultaneously alleged to be fulfilled by the prior art at the PTAB.

Patent Owner Preliminary Response and Testimonial Evidence (p.18)

The Trial Guide Update reiterates the rule change from May of 2016 permitting the submission of testimonial evidence with a preliminary response, but it also cautions that genuine issues of material fact will be viewed in a light most favorable to the petitioner for the purposes of rendering an institution decision. For this reason, some petitioners have been hesitant to introduce pre-institution expert testimony on a contested fact issue at a time in the proceeding where such testimony may be entitled to less weight. Guidance from the Board that "[n]ot every factual contradiction rises to the level of a genuine issue of material fact," even when there are dueling experts, may serve to mitigate such concerns, if only slightly. Also of note, the Guide expressly permits patent owners to withdraw testimonial evidence submitted in a preliminary response if a trial is instituted, and thereby avoid deposition of the declarant.

Discretionary Trial Institution (p.22)

The Trial Guide Update provides guidance on the Board's considerations in exercising its discretion to deny institution under 314(a) when confronted with multiple petitions for the same patent.

Aside from echoing the General Plastic, Valve, and NHK considerations (i.e., follow-on petitions and overlapping district court proceedings), the Trial Guide Update signals that the Board generally considers a single petition per patent as sufficient to balance the fairness, timing, and efficiency concerns under 35 U.S.C. 316(b). Although the Guide does not foreclose the possibility of instituting on multiple petitions for the same patent, it places the burden on the petitioner to explain why "more than one petition is necessary." Specifically, a petitioner filing multiple petitions must identify (1) "a ranking of the petitions in the order in which it wishes the Board to consider the merits" and (2) "the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions." Patent owners in turn can respond to these arguments in a manner that may discourage institution of multiple petitions. Specifically, the guidance suggests that a patent owner can "avoid additional petitions" by offering stipulations that resolve the material or disputed issues identified by the petitioner.

Motions to Amend (p.32)

The Trial Guide Update recognizes the Aqua Products' holding that "a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend." Accordingly, a patent owner is not required to provide arguments/evidence in support of the patentability of the substitute claims, and yet the Guide suggests expert testimony "may be helpful."

The Trial Guide Update also provides guidance on claim construction issues with respect to substitute claims. First, the Guide states that the patent owner "should" specifically articulate any proposed constructions for new claims terms in the substitute claims. Although the guidance does not specify any ramifications for failing to propose such constructions in the motion to amend, a construction raised for the first time in a reply brief may not be favorably received. Second, the Guide reiterates the October 2018 Final Rule, which specifies that the substitute claims must be interpreted under the Phillips standard (for petitions filed after Nov. 13, 2018). Third, the Guide notes that the patent owner's motion to amend may request the Board to find that the scope of a substitute claim is "substantially identical" to the original claim under 252. By seeking and obtaining such a finding, the patent owner can preemptively address an intervening rights defense that an accused infringer may argue is otherwise triggered by the substitute claim.

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The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.