Office Patent Trial Practice Guide (August 2012)

Superseded on November 20, 2019 by Consolidated Trial Practice Guide (November 2019). The Office Patent Trial Practice Guide explains the general framework of the final trial rules in 37 CFR Part 42 for inter partes review, post-grant review, covered business method review and derivation proceedings. It sets out the sequence of petition, preliminary response, institution, scheduling order, discovery, motions (including motions to amend), oral argument and final decision, and it supplies appendices with a scheduling order, protective order guidelines, an e-discovery model order and testimony guidelines. Petitioners must file claim-by-claim petitions that certify eligibility, provide claim constructions, and disclose real parties-in-interest and privies. The Guide says the Board will apply traditional common-law principles to those questions case by case. Patent owners learn that the broadest reasonable interpretation applies, that a first motion to amend requires conferring with the Board, and that a presumption of one substitute claim per challenged claim applies. The Guide says it rests on the AIA, including 35 U.S.C. 314, 316, 324, 326 and 325(d), and on the rules at 37 CFR Part 42. WHAT IT DOES: Describes the trial framework: a petition identifying each challenged claim, ground and evidence; a patent owner preliminary response due within three months of the filing date, which may be waived; an institution decision within three months that narrows the trial claim by claim; a Scheduling Order issued with institution that completes trial within one year; sequenced discovery (routine, additional, compelled testimony, initial disclosures, e-discovery); motions practice requiring prior Board authorization with conference calls; page limits (60 pages for IPR and derivation petitions, 80 for PGR and CBM petitions, 15 for motions); motions to amend with a presumption of one substitute claim per challenged claim; motions to exclude; observations on cross-examination; oral argument; settlement; final written decision within one year, extendable up to six months for good cause; and rehearing requests. It also sets protective-order, e-discovery and testimony guidelines. WHO AND WHEN: Applies to inter partes review, post-grant review and covered business method patent review proceedings commencing on or after September 16, 2012, and to derivation proceedings commencing on or after March 16, 2013. It covers petitioners, patent owners, and derivation respondents before the Board. KEY QUOTE: "The Office has for decades employed the broadest reasonable interpretation standard to construe claims before the Office, and it will continue to do so in IPR, PGR, and CBM proceedings for construing challenged claims as well as any amended or new claims." (p. 48764) EARLIER GUIDANCE AFFECTED: It revises the Practice Guide for Proposed Trial Rules, 77 FR 6868 (Feb. 9, 2012), based on the final rules and public comments. It accompanies the final rules named in the document (RIN 0651-AC70, 0651-AC71, 0651-AC75 and 0651-AC74). It also draws on Office reexamination decisions on real party-in-interest, such as In re Guan, Control No. 95/001,045. PRACTICE TIP: Treat the Guide as the roadmap for the whole trial. Name every real party-in-interest and privy in the mandatory notices, file claim-by-claim petitions with claim constructions and expert testimony that discloses underlying facts, and raise any new motion at the initial conference call so the Board can authorize it. Patent owners should confer with the Board before a motion to amend and tie each substitute claim to written-description support. Issued by David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.