Trial Practice Guide (August 2018 update)

Superseded on November 20, 2019 by Consolidated Trial Practice Guide (November 2019). The August 2018 update revises selected sections of the Trial Practice Guide on a rolling basis. It addresses expert testimony, word and page limits, institution discretion under 35 U.S.C. §§ 314(a), 324(a) and 325(d) (the General Plastic and Becton Dickinson factors), replies and sur-replies after SAS, motions to exclude and strike, and oral hearings. It also includes an updated sample scheduling order and due date appendix. Petitioners must support expert testimony with explanation and cannot use it to supply a missing element of a prior art reference. They must also keep new evidence and arguments out of replies that belong in the petition. Patent owners get a framework for opposing follow-on or duplicative petitions, and a sur-reply that may address the institution decision. The guide rests on 37 C.F.R. §§ 42.23, 42.24, 42.64 and 42.65, 35 U.S.C. §§ 311(b), 314(a), 316(b), 324(a) and 325(d), and the Supreme Court's decision in SAS. WHAT IT DOES: Says expert testimony must rest on sufficient facts and data, and cannot replace disclosure in a prior art reference or in patents or printed publications. Restates word and page limits and the word count certification. Lists the General Plastic factors for §§ 314(a)/324(a) discretion and the Becton Dickinson factors for § 325(d). Lets the petitioner address the institution decision in reply and the patent owner in sur-reply, and bars new evidence or arguments that could have been presented earlier. Treats motions to strike as a rarely granted exceptional remedy and allows early rulings on a limited number of motion to exclude objections at a pre-hearing conference. Sets rules for oral hearing, demonstratives and live testimony, and updates the sample scheduling order. WHO AND WHEN: Applies to AIA trial proceedings (inter partes review, post-grant review, covered business method review and derivation proceedings) before the Board. The update is dated August 2018 and is issued section by section on a rolling basis. The text gives no separate effective date. KEY QUOTE: "Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis." (p. 4) EARLIER GUIDANCE AFFECTED: It updates the Office Patent Trial Practice Guide published in August 2012 (77 Fed. Reg. 48,756) by changing or adding the listed sections. It states that the new sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. It applies General Plastic v. Canon (precedential) and the informative decisions Becton Dickinson, Cultec, Hospira and Kayak. PRACTICE TIP: Put every theory, rationale to combine and supporting reference in the petition, and explain any expert testimony in the brief rather than incorporating it by reference. A reply that raises new issues or gap-filling art risks not being considered.