Updated Procedures at the Patent Trial and Appeal Board

By John Isacson

July of 2019 has been an active month for the Patent Trial and Appeal Board (PTAB).  The PTAB issued a Trial Practice Guide Update that addresses:

  • Factors that may be considered by the Board in determining when additional discovery will be granted
  • The revised claim construction standard to be used in IPR (inter partes review), PGR (post-grant review), and CBM (covered business method) proceedings
  • The submission of testimonial evidence with a patent owner preliminary response
  • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
  • Motion to amend practice
  • Factors that may be considered by the Board in determining whether to grant a motion for joinder
  • Procedures to be followed when a case is remanded
  • Procedures for parties to request modifications to the default protective order

The July 2019 Update can be accessed on the PTAB website.

Additionally, on July 10, 2019, the PTAB made precedential its Order in IPR2014-00116 (Paper No. 19).  This Order concerned the PTAB’s Testimony guidelines, and clarified that defending counsel can confer with their witness prior to taking re-direct testimony provided that preceding cross-examination has concluded.  If re-cross is commenced, counsel may no longer confer with their witness until re-cross concludes.  This procedure differs from other venues, where counsel may not confer with their witness until the deposition is over.