By Kevin E. Noonan —

On August 8th, the U.S. Patent and Trademark Office issued revisions to its Patent Trial and Appeal Board (PTAB) Guide (see "Trial Practice Guide Update"), first promulgated in 2012 as part of the Office's implementation of inter partes review (IPR), post-grant review (PGR), and covered business methods review (CBM) proceedings established under the Leahy-Smith America Invents Act (AIA).  As discussed in an accompanying memorandum from USPTO Director Iancu, this update is part of the Office's plan to issue updates periodically, on section-by-section, rolling basis; the Director anticipates further future updates "to take into account feedback received from stakeholders, changes in controlling precedent or applicable regulations, or the further refinement of the Board's practices over time."

In addition to being a resource for petitioners and patent owners, the Guide has as its purpose "to encourage consistency of procedures among panels of the Board," akin to the role of the MPEP with examiners.  As with the practice of having "expanded panels" to promote consistency in decisions, this function further limits the extent to which APJ's activities are consistent with an independent adjudicatory arm of the USPTO.

The following Sections are revised in this update:

• I.G. (Expert Testimony),
• II.A.3. (Word Count and Page Limits),
• II.D.2. (Considerations in Instituting a Review),
• II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies),
• II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike),
• II.M. (Oral Hearing), and
• Appendix A (Sample Scheduling Order).

The revised provisions (which contain varying amounts of specific changes and in some instances just update the provisions consistent with PTAB practice) are set forth as follows.

Section I.G. (Expert Testimony)

Expert testimony can be entered into evidence with the petition, with the preliminary response, "and at other appropriate stages in a proceeding as ordered or allowed by the panel overseeing the trial."  The basis for admitting expert testimony (in the form of an affidavit or declaration) is "where the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue."  The status of a declarant as an expert witness must be supported by evidence regarding the expert's "knowledge, skill, experience, training, or education," but there is no requirement that there be "a perfect match between the expert's experience and the relevant field," citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (and in particular there is no requirement that the expert be a "person or ordinary skill" in the art, citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008)).

Expert witness testimony can be used "to explain the relevant technology to the panel . . . to establish the level of skill in the art and describe the person of ordinary skill in the art . . . [regarding] the teachings of the prior art and how they relate to the patentability of the challenged claims . . . [or] on the issue of whether there would have been a reason to combine the teachings of references in a certain way, or if there may have been a reasonable expectation of success in doing so," as well as offering evidence on the objective indicia of nonobviousness and how such evidence should be weighed against evidence of unpatentability, or to explain the "nature and import" of such objective evidence.

The Board has "broad discretion" in assigning weight to evidence, but such testimony must disclose "sufficient facts and data" to be given evidentiary weight and be based on "reliable principles and methods," citing Fed. R. Evid. 702.  Parties can incorporate expert testimony into their "petitions, motions, or replies" but unless a party provides sufficient explanation of the testimony a party may "risk having the testimony not considered by the Board," citing Cisco Systems, Inc. v. C-Cation Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative).

Expert testimony cannot take the place of a reference to establish lack of novelty or obviousness.  Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (novelty); K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014) (obviousness).

Section II.A.3. (Word Count and Page Limits)

Certain papers have word counts:

• petitions (for IPRs: 14,000 words; for PGRs and CBMs: 18,800 words);
• patent owner preliminary responses, patent owner responses, and petitioner replies to patent owner responses (5,600 words), and
• any sur-replies filed in AIA trial proceedings are limited to the word limits in the corresponding petitions, responses, or replies,

while everything else has a page limit.  For example, motions to amend have a 25-page limit while all other motions have a 15-page limit.  Replies to oppositions to motions to amend are limited to 12 pages, while all other replies are limited to 5 pages.  The Guide has the following "practical guidance" regarding word count limits:

Parties should not abuse the process.  Excessive words in figures, drawings, or images, deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party's brief not being considered.

Citing Pi-Net Int'l, Inc. v. JPMorgan Chase & Co., 600 F. App'x 774 (Fed. Cir. 2015).

Section II.D.2. (Considerations in Instituting a Review)

In General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, the Board recognized the goals of the AIA ("to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs"), but also "recognize[d] the potential for abuse of the review process by repeated attacks on patents."  IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19) (precedential).

Based on General Plastic, the Guide sets forth non-exclusive factors that the Board will consider in exercising discretion on instituting inter partes review under 35 U.S.C. §§ 314(a), 324(a), especially as to "follow-on" petitions challenging the same patent as challenged previously:

1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
3. whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

None of these factors are dispositive (or exclusive), but are "part of a balanced assessment of all relevant circumstances in the case, including the merits."  Also relevant are "events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC," citing NetApp, Inc. v. Realtime Data LLC, Case IPR2017-01195, slip op. at 12–13 (PTAB Oct. 12, 2017) (Paper 9).

With regard to subsequent petitions on the same or relevant art, and the Director's discretion under 35 U.S.C. § 325(d) to decide not to institute these proceedings, the Guide cites non-dispositive and non-exclusive considerations set forth in Becton Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative):

1. the similarities and material differences between the asserted art and the prior art involved during examination;
2. the cumulative nature of the asserted art and the prior art evaluated during examination;
3. the extent to which the asserted art was evaluated during examination;
4. the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art;
5. whether a petitioner has pointed out sufficiently how the Office erred in evaluating the asserted prior art; and
6. the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.

Section II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies)

In response to the Supreme Court's SAS decision, "the Board will permit the petitioner, in its reply brief, to address issues discussed in the institution decision" and "[t]he Patent Owner will similarly be allowed to address the institution decision in its sur-reply, if necessary to respond to petitioner's reply."  No new evidence or argument is permitted but "responsive rebuttal evidence" is permitted under Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015).  Such evidence is subject to cross-examination, motions to exclude, and "comment" on both in a sur-reply.

Sur-replies will be permitted on a case-by-case basis, and are limited to evidence or argument raised in a reply, including expert testimony.  These sur-replies replace Patent Owner motions for observations and are available as of right to the patent owner.

Section II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike)

Objections on admissibility of evidence must be filed within 5 days of service/filing, and supplemental evidence in response to such objections are served not filed, and filed only in an opposition to a motion to strike.

Motions to exclude: due dates for motions to exclude evidence are set in the Scheduling Order, and must include citation to the record where the objection was made; where that evidence was relied upon by an opponent; identify the objections to exhibits in numerical order; and explain the basis and grounds for each objection.

Objections are procedural/categorical (relevance or hearsay) not substantive (that the evidence doesn't support the contention asserted), and are directed to admissibility not the weight the Board should give the evidence.  Most of the time, the Guide notes that the motion is mooted because the Board does not rely on that evidence in making its patentability determination.

Motions to strike: the basis for these motions is "a brief filed by the opposing party [that] raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply."  These motions are considered on a case-by-case basis; they must be filed within one week of the objected-to brief.

The Guide provides an alternative:  further briefing/sur-reply, but motions to strike will be considered if the additional brief is prejudicial (for late filing or otherwise), while a sur-reply is best used to influence the weight the Board will give the evidence at issue.

Striking the entirety of an opponent's brief is "an exceptional remedy" and is unlikely to be granted.  The Guide provides an example of circumstances where a motion to strike could be favorably entertained:  "where a reply clearly relies on a new theory not included in prior briefing, and where addressing this new theory during oral hearing would prejudice the opposing party, striking the portion of the brief containing that theory may be appropriate."

Section II.M. (Oral Hearing)

Oral hearings must be requested, and each party usually gets one hour for argument but a party can request more time.  The Guide provides for a pre-hearing conference with Board at either parties' request (which can be done by e-mail) and the parties are expected to hold a meet-and-confer prior to the hearing to identify the issues to be raised in the conference.  The Guide provides that the intent of the conference is to preview but not argue each party's positions.

The form of the proceedings allow the Petitioner to reserve up to half its time for rebuttal, and the Patent Owner can get a brief sur-rebuttal if requested.  Only demonstrative exhibits are permitted, and under circumstances where the Board believes it to be helpful live testimony can be heard.  But new evidence or arguments are strictly forbidden.

Finally, the Guide provides a Sample Scheduling Order in an Appendix.

Nothing in the revisions to the Guide is revolutionary, but is an example of the evolution of PTAB practice in the face of its own experience and in response to Supreme Court and Federal Circuit decisions.

For further information the Guide directs practitioners to Michael Tierney and William Fink, Vice Chief Administrative Patent Judges, by telephone at (571) 272-9797.