USPTO Publishes its Second PTAB Trial Practice Guide Update

On July 16, 2019, the Patent Office published its 2019 Trial Practice Guide Update, a copy of which can be found here. This follows on the heels of last August’s Trial Practice Guide Update (here) which, perhaps most importantly, provided patent owners with a sur-reply to petitioner’s reply brief as a matter of right.

This summer’s update does not introduce such a change to trial practice, but primarily incorporates “current practices and precedential decisions” into the Trial Practice Guide to help promote further consistency across all PTAB decisions. The July 2019 Update includes guidance on the following topics:

• Prohibitions on ex parte communications;
• Protective orders and confidentiality concerns (Appendix B includes protective order guidelines and the PTAB’s default protective order);
• Additional discovery;
• Claim construction and last-year’s change to the Phillips standard;
• Discretionary considerations in instituting review (more on this below);
• Motions to amend;
• Motions for Joinder (including discussion of the Precedential Opinion Panel’s Proppant Express decision allowing “issue joinder” in certain circumstances (see my March 14, 2019 article discussing Proppant Express));
• Remand procedures; and
• Requests for rehearing.

Beyond expounding upon the PTAB’s equitable and discretionary considerations surrounding its decision to institute review (as set forth in General Plastic and its progeny), the 2019 Update highlights the PTAB’s continued focus on “follow-on” petitions against previously challenged patents; follow-on petitions from similarly situation defendants; “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC” (see my May 17, 2019 article discussing this issue); as well as parallel petitions challenging the same patent. As to this final inquiry, the 2019 Update notes that “[b]ased on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situations.” Two petitions may be appropriate, in “rare” circumstances, “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about the priority date requiring arguments under multiple prior art references.” The Update concludes on this point by noting that three or more petitions by a petitioner against a single patent will almost never be allowed.

If two or more petitions challenging the same patent are filed, the petitioner should identify in its petitions, or in a separate 5-page paper limited to this issue, “(1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of 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 if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Patent owners can respond to petitioner’s identification in their preliminary response or in a separate, 5-page paper filed with their preliminary response. Patent owner’s arguments should explain why the identified differences are directed to non-material issues and/or issues that are not in dispute.

Given the PTAB’s inclusion of this explanation in the 2019 Update, we suspect panels to require strict compliance with this provision when two or more petitions are filed against the same patent. Similarly, anytime a “follow-on” petition is filed, whether by the same petitioner or an entirely separate entity, the existence of that prior petition should not be ignored and the petitioner should provide an explanation as to why institution of this later-in-time petition is warranted.