Consolidated Trial Practice Guide (November 2019)

Superseded by Consolidated Trial Practice Guide (December 2025, web). The November 2019 Consolidated Trial Practice Guide folds the August 2012 Practice Guide and the August 2018 and July 2019 updates into one document describing AIA trial practice (IPR, PGR, CBM and derivation) before the Board. It sets out procedures for counsel, mandatory notices, confidentiality, discovery, petitions, preliminary responses, institution (including General Plastic, parallel-petition and § 325(d) considerations), motions to amend, replies and sur-replies, motions to exclude and strike, oral hearing, final decisions, remands and rehearing. It also includes sample scheduling orders, a default protective order, a model e-discovery order and testimony guidelines. Petitioners learn that the Board will institute on all challenged claims and grounds or none, and that the Board may still deny the whole petition under §§ 314(a) and 325(d). A petitioner filing two or more petitions on one patent must rank them and explain the differences in the petitions or in a separate paper of no more than 5 pages. Patent owners learn how to respond (preliminary response, sur-reply, motion to amend), including that under Aqua Products the petitioner ordinarily bears the burden of persuasion on substitute claims. The guide rests on the AIA, 37 C.F.R. Part 42, SAS Institute v. Iancu, and Board decisions it names such as General Plastic, Becton Dickinson and Lectrosonics. WHAT IT DOES: Consolidates the 2012 guide with the August 2018 and July 2019 updates. Reflects institution after SAS (all claims and grounds or none, with the whole petition deniable under §§ 314(a) and 325(d)). Replaces observations on cross-examination with sur-replies. Sets word counts and page limits. Applies the Phillips claim construction standard. Requires multiple petitions against one patent to be ranked and justified. Describes the General Plastic and Becton Dickinson factors. Places the burden of persuasion on substitute claims with the petitioner (Aqua Products). Covers motions to exclude and strike, the pre-hearing conference, remands, rehearing, and appendices (scheduling orders, protective order, e-discovery order, testimony guidelines). WHO AND WHEN: Applies to AIA trials before the Board: IPR, PGR, CBM and derivation proceedings. The Phillips-based claim construction standard applies to petitions filed on or after November 13, 2018. The pilot motion to amend timeline is tied to trials instituted on or after March 15, 2019. For petitions submitted after publication of the guide, patent owners and petitioners are expected to address multiple petitions in the petitions and preliminary responses. KEY QUOTE: "Based on the Board's experience, one petition should be sufficient to challenge the claims of a patent in most situations." (p. 59) EARLIER GUIDANCE AFFECTED: It incorporates the updates from August 2018 and July 2019 into the original August 2012 Practice Guide (77 Fed. Reg. 48,756) so that the most recent versions of all sections are in one document. It says the practice of observations on cross-examination testimony is essentially replaced by sur-replies. It notes that panels may continue to authorize the additional paper on multiple petitions (Comcast Cable Commc'ns v. Rovi Guides) only for petitions submitted before the guide's publication. It says motion to amend practice is under review and refers to the March 15, 2019 pilot program notice (84 Fed. Reg. 9497). PRACTICE TIP: If you file more than one petition against the same patent, rank the petitions and explain in the petitions or a separate paper of no more than 5 pages why each is material and why the Board should institute more than one. Patent owners should respond in the preliminary response or a separate paper of no more than 5 pages, and should proffer any stipulations.