TRIAL PRACTICE GUIDE UPDATE
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`(July 2019)
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`Introduction ....................................................................................................................................4
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`I. General Procedures ...............................................................................................................4
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`A. Jurisdiction and Management of the Record..................................................................... 4
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`2. Prohibition on Ex Parte Communications ......................................................................4
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`Arranging a conference call with the Board ................................................................... 5
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`Refusal to participate ...................................................................................................... 6
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`E. Public Availability and Confidentiality ............................................................................. 6
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`4. Protective orders .............................................................................................................6
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`F. Discovery ........................................................................................................................... 7
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`2. Additional discovery .......................................................................................................7
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`5. Live testimony ..............................................................................................................12
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`II. Petitions and Motions Practice .........................................................................................13
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`B. Petition ............................................................................................................................ 13
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`6. Claim Construction .......................................................................................................13
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`C. Patent Owner Preliminary Response ............................................................................... 18
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`D. Institution of Trial ........................................................................................................... 22
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`2. Considerations in Instituting a Review .........................................................................22
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`35 U.S.C. §§ 314(a), 324(a) .......................................................................................... 22
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`Parallel Petitions Challenging the Same Patent ............................................................ 26
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`35 U.S.C. § 325(d) ........................................................................................................ 28
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`3. Content of Decision on Whether to Institute ................................................................31
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`G. Motions to Amend .......................................................................................................... 32
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`1. IPR, PGR, and CBM Amendments...............................................................................32
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`Motion to Amend .......................................................................................................... 33
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`Motion to Amend Practice ............................................................................................ 33
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`Due Date ....................................................................................................................... 34
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`Evidentiary Standards ................................................................................................... 34
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`Contents of Motion to Amend ...................................................................................... 35
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`Claim Construction ....................................................................................................... 36
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`2. Amendments in Derivation Proceedings ......................................................................37
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`3. General Practice Tips on Amendments .........................................................................37
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`H. Opposition to a Motion to Amend .................................................................................. 39
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`I. Reply to Patent Owner Response and Reply to Petitioner Opposition to a Motion to
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`Amend ................................................................................................................................... 39
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`J. Other Motions................................................................................................................... 40
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`Motions for Joinder ....................................................................................................... 41
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`O. Final Decision ................................................................................................................. 44
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`Remands ........................................................................................................................ 45
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`P. Rehearing Requests ......................................................................................................... 48
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`APPENDIX B: Protective Order Guidelines (based on the trial rules). ................................50
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`Introduction
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`The Office published the Office Patent Trial Practice Guide (“Practice Guide”) in August 2012,
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`concurrent with the promulgation of the AIA Trial Rules. See 77 Fed. Reg. 48,756 (Aug. 14,
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`2012). The Practice Guide was intended to apprise the public of standard practices before the
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`Board during AIA trial proceedings, including inter partes reviews, post-grant reviews, covered
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`business method reviews, and derivation proceedings. The Practice Guide also was intended to
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`encourage consistency of procedures among panels of the Board.
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`The Office is committed to updating the Practice Guide to take into account stakeholder
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`feedback, lessons learned during the years since the first AIA trial, and the natural evolution of
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`the Board’s practices. In order to expedite these updates and provide guidance to the public as
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`quickly as possible, the Office has chosen to issue updates to the Practice Guide on a section-by-
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`section, rolling basis, rather than a single, omnibus update addressing all aspects of the current
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`Practice Guide. An update to the Practice Guide was published on August 13, 2018, and is
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`available at https://go.usa.gov/xU7GP. See 83 Fed. Reg. 39,989 (Aug. 13, 2018). Sections of
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`the Practice Guide changed or added in this second update are set forth below.
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`I. General Procedures
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`A. Jurisdiction and Management of the Record
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`2. Prohibition on Ex Parte Communications
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`All substantive communications with the Board regarding a proceeding must include all parties
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`to the proceeding, except as otherwise authorized. 37 C.F.R. § 42.5(d). The prohibition on ex
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`parte communications does not extend to: (1) ministerial communications with support staff (for
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`instance, to arrange a conference call); (2) conference calls or hearings in which opposing
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`counsel declines to participate; (3) informing the Board in one proceeding of the existence or
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`status of a related Board proceeding; or (4) reference to a pending case in support of a general
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`proposition (for instance, citing a published opinion from a pending case or referring to a
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`pending case to illustrate a systemic problem).
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`Arranging a conference call with the Board
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`The Board encourages the use of conference calls to raise and resolve issues in an expedited
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`manner. Prior to making a request for a conference call, the parties should meet and confer to
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`resolve any disputes. If attempts to resolve the dispute fail, a party may request a conference call
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`with the Board. The Board envisions that most of the procedural issues arising during a
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`proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of
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`days. When arranging a conference call, parties should be prepared to discuss with a Trial
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`Section paralegal why the call is needed and what materials may be needed during the call, e.g.,
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`a particular exhibit. When contacting the Board to arrange a conference call, a party to a
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`proceeding should notify the Board if it intends to provide a court reporter for the call. If a court
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`reporter is present for the conference call, the party that retained the court reporter should notify
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`the panel at the beginning of the call that a reporter is on the line, and shall file the transcript of
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`the call as an exhibit to the proceeding within one week of receiving the transcript.
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`Refusal to participate
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`The Board has the discretion to permit a hearing or conference call to take place even if a party
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`refuses to participate. In such cases, the Board may order as a condition for the call additional
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`safeguards, such as the recording of the communication and the entry of the recording into the
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`record.
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`E. Public Availability and Confidentiality
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`4. Protective orders
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`A party may file a motion to seal where the motion contains a proposed protective order, such as
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`the default protective order in Appendix B. 37 C.F.R. § 42.54. A protective order is not entered
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`by default but must be proposed by one or more parties and must be approved and entered by the
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`Board. Specifically, protective orders may be issued for good cause by the Board to protect a
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`party from disclosing confidential information. 37 C.F.R. § 42.54. Guidelines on proposing a
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`protective order in a motion to seal, including a Default Protective Order, are provided in
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`Appendix B. The document or thing will be protected on receipt of the motion and remain so,
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`pending the outcome of the decision on motion. If a motion for a protective order is not granted,
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`the party submitting the confidential information will have the opportunity to have the submitted
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`information expunged from the record. Otherwise, the submitted information may be publicly
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`disclosed.
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`F. Discovery
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`2. Additional discovery
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`A request for additional discovery must be in the form of a motion, although the parties may
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`agree to such discovery among themselves. 37 C.F.R. § 42.51(b)(2). Parties to an AIA trial can
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`generally seek the same types of discovery available under the Federal Rules of Civil Procedure.
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`The standard for granting such requests varies with the proceeding.
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`By way of background, an “interests of justice” standard applies in IPR and derivation
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`proceedings (37 C.F.R. § 42.51(b)(2)), whereas the slightly more liberal “good cause” standard
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`applies in PGR and CBM proceedings (37 C.F.R. § 42.224). The more liberal “good cause”
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`standard applies to PGR and CBM proceedings because the scope of these proceedings may be
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`broader than IPRs. They include all of the grounds of IPRs, as well as 35 U.S.C. §§ 101 and 112
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`(with the exception of failure to disclose the best mode). Also, because a petition for a PGR
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`must be filed no later than nine months after the date of the grant of a patent or of the issuance of
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`a reissue patent (35 U.S.C. § 321(c)), information regarding the patentability of claims subject to
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`PGR review may be more readily available than information regarding the patentability of claims
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`subject to other forms of review that could take place many years after the challenged patent
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`issued, and therefore discovery in a PGR is likely to be obtained from the patent owner in a less
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`burdensome manner. The discussion below centers on additional discovery under the “interests
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`of justice” standard.
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`In determining when a request for additional discovery will be granted in IPRs under the in the
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`“interests of justice” standard, the Board will be guided primarily by the factors set forth in the
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`Board’s precedential decision in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
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`00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential). Similar factors for consideration of such
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`requests under the “good cause” standard are set forth in Bloomberg Inc. v. Markets-Alert Pty
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`Ltd., Case CBM2013-00005 (PTAB May 29, 2013) (Paper 32) (precedential). Parties in PGR
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`and CBM proceedings should also refer to that decision for guidance.
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`In Garmin, the Board set forth a set of five factors considered to be important in authorizing and
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`deciding a motion for additional discovery:
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`“1. More Than A Possibility And Mere Allegation—The mere possibility of finding
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`something useful, and mere allegation that something useful will be found, are insufficient to
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`demonstrate that the requested discovery is necessary in the interest of justice. The party
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`requesting discovery should already be in possession of evidence” or reasoning “tending to show
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`beyond speculation that in fact something useful will be uncovered.” Garmin, Case IPR2012-
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`00001, slip op. at 6. See, e.g., Kashiv Pharma LLC v. Purdue Pharma L.P., Case IPR2018-
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`00625 (PTAB July 31, 2018) (Paper 20) (granting patent owners’ motion for additional
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`discovery where patent owners identified several pieces of “threshold” evidence that tended to
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`show that the two requested depositions would shed light on the question of whether an
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`additional party should have been named as a real party-in-interest); Mylan Pharmaceuticals Inc.
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`v. Allergan Inc., Case IPR2016-01127 (PTAB May 31, 2017) (Paper 28) (granting additional
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`discovery of data underlying figures relied on by the patent owner in order for the petitioner to
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`fully develop its rebuttal to patent owner’s evidence of unexpected results). Additionally,
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`“‘useful’ . . . does not mean merely ‘relevant’ and/or ‘admissible,’” but rather “means favorable
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`in substantive value to a contention of the party moving for discovery.” Garmin, Case IPR2012-
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`00001, slip op. at 7. See, e.g., Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00043 (PTAB
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`June 21, 2013) (Paper 27) (finding that laboratory notebooks were per se useful because they
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`contained protocols and procedures used to synthesize and test oligomers and coatings that were
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`relied on by the petitioner’s expert to demonstrate unpatentability of the challenged claims).
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`“2. Litigation Positions And Underlying Basis—Asking for the other party’s litigation
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`positions and the underlying basis for those positions is not necessary in the interest of justice.
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`The Board has established rules for the presentation of arguments and evidence. There is a
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`proper time and place for each party to make its presentation. A party may not attempt to alter
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`the Board’s trial procedures under the pretext of discovery.” Garmin, Case IPR2012-00001, slip
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`op. at 6. Therefore, a party will receive this information in due course. Thus, contention
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`interrogatories would typically not be permitted. See, e.g., St. Jude Med., LLC v. Snyders Heart
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`Valve LLC, Case IPR2018-00105 (PTAB Oct. 18, 2018) (Paper 37) (denying petitioner’s request
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`of expert reports and deposition transcripts from a parallel litigation because petitioner stated that
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`such discovery was sought to probe patent owner’s IPR positions).
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`“3. Ability To Generate Equivalent Information By Other Means”—Production by
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`another of “[i]nformation a party can reasonably figure out or assemble without a discovery
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`request would not be in the interest of justice. . . .” Garmin, Case IPR2012-00001, slip op. at 6.
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`See, e.g., Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd., Case IPR2016-00260 (PTAB Nov.
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`30, 2016) (Paper 39) (denying petitioner’s request for additional documents and deposition partly
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`because petitioner did not show that it could not obtain information about the state of the art and
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`properties of drill cuttings by other means). “In that connection, the Board would want to know
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`the ability of the requesting party to generate the requested information without need of
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`discovery.” Garmin, Case IPR2012-00001, slip op. at 6.
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`“4. Easily Understandable Instructions”—The requests “should be easily
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`understandable.” Garmin, Case IPR2012-00001, slip op. at 6.
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`“5. Requests Not Overly Burdensome To Answer—The requests must not be overly
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`burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes
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`financial burden, burden on human resources, and burden on meeting the time schedule of Inter
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`Partes Review. Requests should be sensible and reasonably tailored according to a genuine
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`need” for the discovery. Garmin, Case IPR2012-00001, slip op. at 7.
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`A party seeking authorization to file a motion for additional discovery should be prepared to
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`address the Garmin factors and any other pertinent factors during a conference call with the
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`Board to discuss the motion.
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`Two areas where additional discovery has been sought frequently are identifying real parties-in-
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`interest and secondary evidence of non-obviousness. Narrowly focused requests for additional
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`discovery on these issues may, if appropriate, be permitted. See, e.g., Ventex Co. v. Columbia
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`Sportswear N. Am., Inc., Case IPR2017-00651 (PTAB Dec. 19, 2017) (Paper 40) (granting
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`additional “focused and narrow” discovery regarding production of “relevant testimony
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`concerning secondary consideration of non-obviousness”); but see Palo Alto Networks, Inc. v.
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`Juniper Networks, Inc., Case IPR2013-00369 (PTAB Feb. 5, 2014) (Paper 36) (denying
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`additional discovery relating to copying where patent owner failed to adequately explain how the
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`allegedly copied feature was embodied in the claims for which trial was instituted and finding
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`that the request appeared “not focused, overly broad, and unduly burdensome”); see, e.g.,
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`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488 (PTAB Nov. 5,
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`2014) (Paper 25) (granting additional discovery of information pertaining to real party-in-interest
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`that was narrowly tailored to communications “regarding the preparation or filing of the
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`Medtronic IPRs”); but see Unified Patents v. Vilox Techs., Case IPR2018-00044 (PTAB Feb. 6,
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`2019) (Paper 64) (denying request for post-oral argument real party-in-interest discovery where
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`patent owner acknowledged that the discovery would not have any impact on the merits of the
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`final decision and did not assert that any time bar applied).
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`5. Live testimony
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`Cross-examination may be ordered to take place in the presence of an administrative patent
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`judge, which may occur at the deposition or oral argument. Occasionally, the Board will permit
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`live testimony where the Board considers the demeanor of a witness critical to assessing
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`credibility. Examples of where such testimony may be permitted before the Board include where
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`derivation is an issue or where misconduct is alleged to have occurred during the proceeding. In
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`another instance, such testimony was allowed where the witness was an inventor who provided
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`declaration testimony to antedate the references relied on by the petitioner to challenge
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`patentability. See K-40 Elecs., LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014)
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`(Paper 34) (precedential). In contrast, the testimony of an inventor at an oral hearing was
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`considered new evidence, and was not permitted, when a declaration from the inventor had not
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`been previously provided. See DePuy Synthes Prods., Inc. v. MEDIDEA, L.L.C., Case IPR2018-
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`00315 (PTAB Jan. 23, 2019) (Paper 29) (precedential).
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`Live testimony will be necessary only in limited circumstances and requests for live testimony
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`will be approached by the Board on a case-by-case basis. Factors that may be considered by the
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`Board in determining whether to permit live testimony are set forth in the Board’s precedential
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`decision in K-40 Electronics, Case IPR2013-00203, slip op. at 3. Such factors may include the
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`importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive. Id.
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`Another factor favoring live testimony is if the witness is a fact witness. Id. In contrast, the
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`credibility of experts often turns less on demeanor and more on the plausibility of their theories.
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`See Andreu v. Sec’y of HHS, 569 F.3d 1367, 1379 (Fed. Cir. 2009). See Appendix D of the
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`August 2012 Trial Practice Guide for guidance on testimony and Section II.M. of the August 13,
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`2018 Trial Practice Guide update for additional information on live testimony at an oral hearing.
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`II. Petitions and Motions Practice
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`B. Petition
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`6. Claim Construction
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`If a petitioner believes that a claim term requires an express construction, the petitioner must
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`include a statement identifying a proposed construction of the particular term and where the
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`intrinsic and/or extrinsic evidence supports that meaning. On the other hand, a petitioner may
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`include a statement that the claim terms require no express construction. The patent owner may
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`then respond to these positions and/or propose additional terms for construction, with
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`corresponding statements identifying a proposed construction of any particular term or terms and
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`where the intrinsic and/or extrinsic evidence supports those meanings. The petitioner may
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`respond to any such new claim construction issues raised by the patent owner, but cannot raise
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`new claim construction issues that were not previously raised in its petition. If the Board raises a
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`claim construction issue on its own, both parties will be afforded an opportunity to respond
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`before a final written decision is issued. See, e.g., Hamilton Beach Brands, Inc. v. f’real Foods,
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`LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. ComplementSoft, LLC., 825
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`F.3d 1341, 1351 (Fed. Cir. 2016), reversed on other grounds, SAS Inst., Inc. v. Iancu, 138 S. Ct.
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`1348, 1351 (2018)) (finding that the Board did not violate the Administrative Procedure Act
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`when it adopted its own claim construction in the final written decision because the parties had
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`notice of the contested claim construction and an opportunity to be heard).
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`Where claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must
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`provide a construction that includes both the claimed function and the specific portions of the
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`specification that describe the structure, material, or acts corresponding to each claimed function.
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`37 C.F.R. § 42.104(b)(3). A party may choose to elaborate why § 112(f) should or should not
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`apply to the limitation at issue. See Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.
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`2015). A petitioner who chooses not to address construction under § 112(f) risks failing to
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`satisfy the requirement of 37 C.F.R. § 42.104(b)(3).
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`The Office has revised the claim construction standard used in IPR, PGR, and CBM proceedings,
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`and now applies the same claim construction standard that would be used to construe the claim in
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`a civil action under 35 U.S.C. § 282(b). See Changes to the Claim Construction Standard for
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`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
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`51,340 (Oct. 11, 2018) (Final Rule) (applying to all IPR, PGR and CBM petitions filed on or
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`after November 13, 2018). This is the same claim construction standard used by Article III
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`federal courts and the ITC, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`(en banc) and its progeny. The amended rules (37 C.F.R. §§ 42.100(b), 42.200(b), and
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`42.300(b)) reflect that in an AIA proceeding, the Board will apply the same standard used in
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`federal courts to construe patent claims. The Board will construe patent claims and proposed
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`substitute claims based on the record of the IPR, PGR, or CBM proceeding, taking into account
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`the claim language itself, specification, and prosecution history pertaining to the patent, as well
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`as relevant extrinsic evidence, all as in prevailing jurisprudence of Article III courts. The Board
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`will also take into account the prosecution history that occurred previously in proceedings at the
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`Office prior to the IPR, PGR, or CBM proceeding at issue, including in another AIA proceeding,
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`or before an examiner during examination, reissue, and reexamination.
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`The Board will determine the claim construction based on the record of the proceeding at issue.
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`Thus, as in a district court proceeding, the parties should point out the specific portions of the
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`specification, prosecution history, and relevant extrinsic evidence they want considered, and
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`explain the relevancy of any such evidence to the arguments they advance. Each party bears the
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`burden of providing sufficient support for any construction advanced by that party.
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`The claim construction rule also provides that “[a]ny prior claim construction determination
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`concerning a term of the claim in a civil action, or a proceeding before the International Trade
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`Commission, that is timely made of record in the . . . proceeding will be considered.” 37 C.F.R.
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`§§ 42.100(b), 42.200(b), 42.300(b). Under this provision, the Board will consider any prior
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`claim construction determination in a civil action or ITC proceeding if a federal court or the ITC
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`has previously construed a term of the involved claim using the same standard, and the claim
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`construction determination has been timely made of record in the IPR, PGR, or CBM
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`proceeding. The Board will give such other claim construction determinations appropriate
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`weight. Non-exclusive factors considered by the Board when determining appropriate weight
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`may include, for example, the similarities between the record in the district court or the ITC and
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`the record before the Board. It may also be relevant whether the prior claim construction is final
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`or interlocutory. These factors will continue to be relevant under the district court claim
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`construction standard, which is articulated in Phillips. The Board may also consider whether the
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`terms construed by the district court or ITC are necessary to deciding the issues before it. This is
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`not an exclusive list of considerations, and the facts and circumstances of each case will be
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`analyzed as appropriate.
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`Parties should submit a prior claim construction determination by a federal court or the ITC in an
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`AIA proceeding as soon as that determination becomes available. Preferably, the prior claim
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`construction determination should be submitted with the petition, preliminary response, or
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`response, along with explanations. Submission of a prior claim construction determination is
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`mandatory under 37 C.F.R. § 42.51(b), if it is “relevant information that is inconsistent with a
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`position advanced by the party during the proceeding.” In such cases, the determination should
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`be submitted “concurrent with the filing of the documents or things that contains the
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`inconsistency.” Id. After a trial is instituted, the Board’s rules on supplemental information
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`govern the timing and procedures for submitting claim construction decisions. 37 C.F.R.
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`§§ 42.123, 42.223. Under those rules, a party must first request authorization from the Board to
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`file a motion to submit supplemental information. If it is more than one month after the date the
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`trial is instituted, the motion must show why the supplemental information reasonably could not
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`have been obtained earlier. Normally, the Board will permit such information to be filed, as long
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`as the final oral hearing has not taken place. The Board may permit a later filing where it is not
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`close to the one-year deadline for completing the trial. Again, parties should submit a prior
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`claim construction as soon as the decision is available.
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`The Board, in its claim construction determinations, will consider statements regarding claim
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`construction made by patent owners and by a petitioner filed in other proceedings, if the
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`statements are timely made of record. Cf. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
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`1360–61 (Fed. Cir. 2017) (extending the prosecution disclaimer doctrine to include patent
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`owner’s statements made in a preliminary response that was submitted in a prior AIA
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`proceeding). To the extent that a party wants such information to be considered by the Board,
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`that party should point out specifically the statements and explain how those statements support
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`or contradict a party’s proposed claim construction in the proceeding at issue. Each party bears
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`the burden of providing sufficient support for any construction advanced by that party.
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`Furthermore, the Board may take into consideration statements made by a patent owner or
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`petitioner about claim scope, such as those submitted under 35 U.S.C. § 301(a), for example.
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`The petitioner and patent owner have opportunities, during the preliminary stage, to submit their
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`proposed claim constructions (in a petition and preliminary response, respectively) and any
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`supporting evidence, including both intrinsic and extrinsic evidence. Upon consideration of the
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`parties’ proposed claim constructions and supporting evidence, the Board will provide an initial
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`claim construction determination in the institution decision, to the extent that such construction is
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`required to resolve the disputes raised by the parties. If a trial is instituted, the parties also will
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`have opportunities to cross-examine any opposing declarants, and to submit additional arguments
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`and evidence, addressing the Board’s initial claim construction determination and the opposing
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`party’s arguments and evidence before oral hearing. The Board also will consider the entirety of
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`the trial record, including the claim language itself, the specification, prosecution history
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`pertaining to the patent, extrinsic evidence as necessary, and any prior claim construction
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`determinations from the federal courts and ITC that have timely been made of record, before
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`entering a final written decision that sets forth the final claim construction determination. All
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`parties will have a full and fair opportunity to present arguments and evidence prior to any final
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`determination.
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`C. Patent Owner Preliminary Response
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`For IPR, PGR, and CBM proceedings, a patent owner may file a preliminary response within
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`three months after the Notice of Filing Date Accorded to Petition. 37 C.F.R. §§ 42.107(b),
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`42.207(b). The preliminary response may present arguments and supporting evidence (including
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`testimonial evidence) to demonstrate that no review should be instituted. 37 C.F.R.
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`§§ 42.107(a), 42.207(a). For example, a patent owner preliminary response may include one or
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`more of the following arguments:
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`(1) The petitioner is statutorily barred from pursuing a review;
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`(2) The references asserted to establish that the claims are unpatentable are not in fact
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`printed publications;
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`(3) The prior art lacks a material limitation in a challenged claim;
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`(4) The prior art does not teach or suggest a combination that the petitioner is advocating;
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`(5) The petitioner’s claim interpretation for the challenged claims is unreasonable;
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`(6) If a PGR or CBM petition raises 35 U.S.C. § 101 grounds, a brief explanation as to
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`how the challenged claims are directed to a patent-eligible invention; or
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`(7) Reasons why the Director should exercise his or her discretion and deny institution
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`under 35 U.S.C. § 314 and/or § 325(b).
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`Testimonial evidence is permitted to be submitted with a preliminary response. “[B]ut, a
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`genuine issue of material fact created by such testimonial evidence will be viewed in the light
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`most favorable to the petitioner solely for purposes of deciding whether to institute [a review].”
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`37 C.F.R. §§ 42.108(c), 42.208(c). This allows the petitioner to have an opportunity to cross-
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`examine the declarant during the trial.