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.

Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”

Year in Review: Changes in PTAB Practice in 2018

By Tom Engellenner
A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law firm experience, appears to have brought a different perspective than that of his corporate predecessors – Michel Lee (Google) and David Kappos (IBM) – to the job at the helm of the USPTO.  In his Senate confirmation hearings, Iancu made it clear that he felt that better balance was needed in the administrative review of issued patents by the USPTO under the America Invents Act (AIA).   He pledged to assess “improvements in the AIA trial standards and processes.”  Iancu identified “institution decisions, claim construction, the amendment process, and the conduct of hearings” as areas that warranted study.  In fact, Director Iancu did a lot more than study these aspects of practice before the Patent Trial and Appeal Board (PTAB) in 2018. Continue reading “Year in Review: Changes in PTAB Practice in 2018”