Trial Practice Guide (July 2019 update)

Superseded on November 20, 2019 by Consolidated Trial Practice Guide (November 2019). The July 2019 Trial Practice Guide update revises selected sections of the August 2012 Practice Guide on a rolling basis. It sets practices on ex parte communications and conference calls, protective orders, additional discovery under the Garmin factors, live testimony, and claim construction under the Phillips standard. It also covers the patent owner preliminary response, discretionary institution (General Plastic factors, parallel petitions, § 325(d) Becton Dickinson factors), motions to amend, joinder, remands, rehearing, and the default protective order. Petitioners filing two or more petitions against 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 must respond in the preliminary response or in a separate paper of no more than 5 pages. Petitioners should address General Plastic, § 325(d) and parallel-proceeding considerations such as the NHK Spring decision's treatment of an advanced district court case. Patent owners filing motions to amend should expect the petitioner to bear the burden of persuasion on unpatentability of substitute claims, in accordance with Aqua Products, and should expect § 101 and § 112 grounds to be raised against substitute claims. The guide rests on 35 U.S.C. §§ 314(a), 316(b), 325(d), and 37 C.F.R. Part 42, including the amended claim construction rules at §§ 42.100(b), 42.200(b) and 42.300(b). WHAT IT DOES: Applies the Phillips district-court claim construction standard and says the Board will consider timely-filed prior court or ITC constructions. Requires petitioners filing multiple petitions against one patent to rank them and explain material differences, in the petitions or a separate paper of no more than 5 pages, with patent owner responses in the preliminary response or a separate paper of no more than 5 pages. Lists the General Plastic factors for follow-on petitions and the Becton Dickinson factors for § 325(d). States that the Board institutes on all challenges or none and may deny the whole petition under §§ 314(a) and 325(d). Explains the Garmin factors for additional discovery, a petition's claim construction content including § 112(f), motions to amend (burden on the petitioner, grounds beyond §§ 102 and 103 allowed against substitute claims), joinder, remands and rehearing, and the default protective order. WHO AND WHEN: Applies to AIA trials, meaning IPR, PGR, CBM and derivation proceedings, as published in July 2019. The Phillips claim construction standard applies to IPR, PGR and CBM petitions filed on or after November 13, 2018. Panels may continue to authorize post-preliminary-response papers on multiple petitions for petitions submitted before the guide's publication, and after publication petitioners are expected to justify multiple petitions in the first instance. Remand parties must contact the Board within ten business days after the mandate issues. KEY QUOTE: "Based on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situations." (p. 26) EARLIER GUIDANCE AFFECTED: Updates the August 2012 Office Patent Trial Practice Guide, published at 77 Fed. Reg. 48,756, and the August 13, 2018 update, 83 Fed. Reg. 39,989, which it calls the second update. It changes or adds sections to those guides on a rolling basis and refers readers to Appendix D of the August 2012 guide and Section II.M. of the August 2018 update on testimony and live testimony. It follows the Final Rule at 83 Fed. Reg. 51,340 on claim construction and refers to the March 15, 2019 pilot program notice on motions to amend, 84 Fed. Reg. 9,497, and to Standard Operating Procedure 9 on remands. It follows Aqua Products and the precedential decisions it cites, including General Plastic, Valve, NHK Spring, Lectrosonics, Amazon.com v. Uniloc, Proppant Express and Huawei v. Optis. PRACTICE TIP: If you file more than one petition against the same patent, include a ranking and a succinct explanation of why each additional petition is material, in the petitions or a separate paper of no more than 5 pages. If you are the patent owner, answer in the preliminary response and consider proffering stipulations. In either role, address discretionary-denial factors such as General Plastic, § 325(d) and parallel proceedings up front.