A First Look at the Post-Grant Patent Trial Practice Guide

August 24, 2012

The final Patent Trial Practice Guide makes significant revisions to the original proposed version, and presents a comprehensive but concise summary that provides the best introduction to procedure in post-grant trials. In the next few years, the Guide and detailed USPTO responses to comments on the final Trial Practice Rules will provide the most significant source of authority to guide litigants and the new Patent Trial and Appeal Board, in addition to procedural precedent developed over decades in interferences.

Significant changes are made to the timeline for proceedings after initiation of a trial, summarized in the Guide as follows: The patent owner’s period for discovery and preparing an amendment has been reduced from four to three months under the default Scheduling Order (Appendix A). The petitioner’s period for responding to an amendment is correspondingly increased to three months. As in interferences, the parties will be able to stipulate an extension of any time period in the first 8 months of the trial (until Due Date 6), but only by reducing later time periods, which is perilous in the extremely compressed default trial schedule. Compassion for an opponent will seldom be the rule, and as in interferences, stipulated extensions will probably involve serious settlement negotiations.

The patent owner and petitioner must be prepared to disclose and discuss their complete substantive and procedural strategies in an initial conference with the Administrative Patent Judge one month after the trial starts. By this early stage of the proceedings, the patent owner will be expected to inform the APJ and petitioner whether it intends to file an amendment, seek specific discovery from the petitioner in addition to cross-examination, propose a modification of the default schedule, or present any other significant motion. The petitioner will have to describe any additional motions it seeks to file, such as for additional discovery based on the patent owner’s preliminary response or disclosures, and other procedural and substantive motions. The rule in interferences has been that the parties must have essentially complete strategies in place by the initial scheduling conference, because a party is seldom allowed to file substantive motions that are not initially disclosed in its motions list.

This burden will be significant, because the patent owner is not permitted to submit testimonial evidence, such as expert declarations, prior to institution of a trial, and its discovery of the petitioner’s witnesses does not begin until the trial commences. Furthermore, the petitioner is given a one-month period after the trial begins to submit “supplemental information” and ordinarily the patent owner’s period for cross-examination begins only after any “supplemental evidence” relating to the direct testimony has been filed. If “supplemental information” is “supplemental evidence,” the patent owner may have less than two months to cross-examine the petitioner’s fact and expert witnesses, since cross-examination ends a week before the patent owner’s amendment is due.

The Guide clarifies the scope of the single amendment that will ordinarily be permitted, explaining that there is a presumption that the patent owner will only be authorized to propose one substitute claim to replace each challenged claim. The Board envisions that the amendment sought by most patent owners will be a replacement of a set of broader claims with a set of narrower claims, as illustrated by an example. In view of the statutory limitation of an amendment to substituting or cancelling claims, a patent owner should not necessarily expect to add new or amended claims without corresponding cancellation of original claims. If the patent owner does file an amendment, the petitioner is entitled “to fully respond” by filing an opposition and presenting responsive evidence, including new expert declarations, which will entail an additional round of cross-examination and a reply, possibly with a rebuttal declaration that will engender further cross-examination and ultimate observations on cross-examination.

The final rules also significantly increase the complexity of proceedings in the period before the trial is instituted, including a requirement for mandatory initial disclosures under § 42.51(a), either by agreement no later than the patent owner’s preliminary response, or by motion. Two lopsided options for agreed initial disclosures are provided. The first is based on Fed. R. Civ. P. 26(a)(1)(A), and requires both parties to disclose the names of persons likely to have discoverable information that the party may use to support its claims or defenses, and a copy of all documents that the disclosing party may use to support its claims or defenses. The second option imposes more extensive obligations solely on the petitioner, including, for example, disclosure of witnesses and documents relating to secondary indicia of nonobviousness, where obviousness is raised as a ground of invalidity. If a prior non-published public disclosure is alleged, the petitioner is required to disclose names and information sufficient to contact “all persons other than those offering affidavits or declarations who are reasonably likely to know of the alleged prior non-published public disclosure” as well as documents and “all things relating to the alleged prior non-published public disclosure.” Id. It is unclear why a petitioner would ever agree to such extensive unilateral disclosure obligations, and motions to require specific disclosure will often be required in post-grant review proceedings. The final rules also retain the vague and open-ended requirement that the parties initially disclose “relevant information that is inconsistent with a position advanced during the proceeding.”

The petitioner is able to submit confidential information under seal, and is not required to serve it with the petition. The petitioner may elect to file a motion to seal with a protective order other than the default protective order, and the patent owner may only access the sealed confidential information by agreeing to the petitioner’s terms, agreeing to another protective order filed jointly by the parties, or moving for entry of the default protective order. These provisions ensure that pre-institution motions practice will become a significant part of trial procedure.

In response to popular demand, the page limits for petitions have been extended to 60 pages in IPR and 80 pages in PGR and derivations, with equal page limits for responses and oppositions. Petitions and motions are not required to provide a statement of material fact, whereas oppositions and replies must identify material facts in dispute. Motions are limited to 15 pages, including motions to amend which are required to “include a claim listing, show the changes being sought clearly, and describe how the original disclosure of the patent and any relied upon prior application supports each claim that is added or amended.”

This general introductory overview is based on the Patent Trial Practice Guide, and does not take into account specific IPR and PGR rules, or the extensive commentary on the final Trial Practice Rules provided by the Office, which will be considered in future posts. It is intended to provide only a general discussion of procedure during the preliminary and trial phases, and is not a commentary on specific rules, procedures, costs or statutory requirements. The information and analysis may be incorrect or incomplete, and these comments do not necessarily represent my own views as to the correct or desirable interpretation of the statute or rules.