IP Alerts

IP Alert
IP Alert: Trials Before the Patent Trial and Appeal Board of the USPTO

September 25, 2012

As previously reported, last month the U.S. Patent and Trademark Office (USPTO) issued rules (“Rules”) and a trial practice guide (“Guide”) for trials before the newly created Patent Trial and Appeal Board (PTAB). The USPTO began conducting trials before the PTAB on September 17, 2012.

Trials before the PTAB are held when the USPTO determines that resolution of a dispute is required under the new inter partes procedures created by the Leahy-Smith America Invents Act (AIA). These procedures include the inter partes review, post-grant review, and covered business method patent review proceedings, as discussed in a previous IP law alert, or the yet-to-be-implemented derivation proceedings.

Formal Matters

All parties to a PTAB trial must file a power of attorney with designation of counsel. Attorneys who appear at a PTAB trial generally must be registered to practice before the USPTO. An attorney who is not registered may move to appear on a pro hac vice status upon a showing of good cause, such as having experience with the matters to be decided at trial. The Rules and Guide contemplate handling requests to file motions and other procedural matters by conference call, and each party should designate lead and backup counsel so that an attorney will be generally available.

Documents created for the trial must be submitted on 8.5 x 11-inch paper using double line spacing and either a 14-point proportional font or a monospace font having no more than 10 characters per inch. Single spacing is acceptable for claim charts, headings, tables of contents and authorities, indices, signature blocks, and certificates of service. Block quotes must use 1.5- inch margins, and the rest of the document must use one-inch margins.

Default Orders

The Guide includes a Model Order Regarding E-Discovery for electronically stored information (ESI) adopted by the PTAB and based on the Federal Circuit’s model order. Parties must submit modifications to this order to the PTAB within one month after the trial’s initiation or by the date of the trial’s initial conference call, whichever is earlier. Costs will be shifted for disproportionate ESI production requests. Metadata should not be produced except for the dates and times a document was sent and received, together with a complete distribution list. Email is not considered a part of ESI and should be separately requested. Email requests are limited to five custodians per producing party, and the email requests must be directed to a specific custodian, a specific time frame, and a specific issue, as opposed to being generally related to a product or business. Other limitations are provided in the Model Order.

The Guide also includes the PTAB’s adopted default Protective Order. The Protective Order allows for submission of information to the PTAB under seal if a nonconfidential version and/or summary of the material is separately filed together with a justification for filing the information under seal. Such information must be marked “PROTECTIVE ORDER MATERIAL” and will be kept under seal until otherwise ordered by the PTAB. Access to such material will be limited to persons who sign an acknowledgment and then are agreed upon by the parties to have access, unless otherwise ordered by the PTAB.

Trial Timeline

By statute, the USPTO is to ensure that trials at the PTAB must be completed within 12 months of the granting of a petition to institute a trial, absent good cause.

The Guide anticipates that the PTAB will issue an initial scheduling order concurrently with the grant of a request to institute a trial. The typical scheduling order is anticipated to specify dates for the following:

1) Third-Party Petition
2) Patent Owner Preliminary Response
3) Decision Granting/Denying Petition
4) Patent Owner Response and Motion to Amend
5) Petitioner Reply and Opposition to Amendment
6) Patent Owner Reply to Amendment Opposition
7) Oral Hearing (if requested)
8) Final Written Decision

Discovery will be permitted at intervals in the foregoing timeline. For instance, the patent owner may take discovery in the time period between initiation of the trial and filing of the patent owner response. The Guide expects this time period to be about three months, although the PTAB may set another period. The petitioner will then have an opportunity to take discovery during the time period between the filing of the patent owner response and the petitioner’s reply, which the Guide expects to be about three months. The patent owner will then have a further discovery period of about one month leading up to the filing of the patent owner reply. Motions to exclude evidence should be filed after the patent owner’s reply, and if new testimony is taken, this may be submitted to the PTAB in short “observations” during this time period. This timeline may be amended by motion to the PTAB.

Motion Practice

Motions are made in writing to the PTAB. As a general rule, motions may not be filed without prior authorization by the PTAB. Exceptions include motions to exclude evidence, to request a rehearing, and to request filing a paper under seal. Oppositions to motions and replies to such oppositions are due one month after service of the motion or opposition. Motions and petitions may be accompanied by a statement of material facts to be admitted or denied in support of the motion or petition.

Motions and oppositions to motions are limited to 15 pages, with replies limited to five pages. A claim chart will count against these page limits unless the chart was submitted in another proceeding and merely included as an exhibit in this proceeding. A party may move for permission to exceed these page limits. Statements of fact count against the filing’s page limit, but the answer to such a statement will not count against the answering party’s page limit.

Submission of evidence must be made by exhibit together with the associated motion or petition. Exhibits must conform to particular rules for submission. For instance, each exhibit must be separately labeled with the petitioner using exhibit numbers ranging from 1001 to 1999 and the patent owner using exhibit numbers ranging from 2001 to 2999.

Typically, the PTAB will assign a panel of three judges to a trial, but any one judge on the trial panel can rule on a given motion. A party dissatisfied with the ruling by a single judge may request a rehearing by the PTAB panel of judges assigned to the trial. The standard for review of such a motion is an “abuse of discretion” standard. A request for a rehearing must be made within 14 days of entry of a non-final decision and within 30 days of a final decision or decision to not institute a trial.

Claim Amendments

The AIA provides the patent owner one opportunity to amend a patent’s claims by right. The Rules and Guide assume that the amendment will accompany the patent owner’s response to the decision initiating the trial.

The Guide states that the motion to amend should set out amended claims as “substitute claims” provided as a replacement for one or more of the originally issued claims. Patent owners must provide support for new or amended claims, which must include a description of support for the claim in the earliest filing relied upon for priority. Amendments cannot broaden a claim, and if new claims are added, the number of new claims must be “reasonable.” The Guide specifically assumes that each substitute claim would replace one originally issued claim, although more substitute claims may be allowed upon demonstration of a need by the patent owner.

The PTAB will only allow additional amendments beyond the first upon a showing of good cause. For example, amendments that narrow the issues of the trial are more likely to be allowed. Similarly, cancellation of claims will likely be allowed up to very late in the trial, and agreed amendments that facilitate a settlement of the trial will likely be allowed.

Discovery and Evidence

The Rules and Guide provide for mandatory initial discovery and additional deposition-based discovery. Discovery will be sequenced and will be limited to those matters reasonably necessary for preparing the party’s next submission.

The Rules require mandatory initial disclosures. The Guide contemplates the parties reaching an agreement on how to exchange the mandatory initial disclosures by the due date for the patent owner’s preliminary response. These initial disclosures may be modeled under Rule 26(a)(1)(A) of the Federal Rules of Civil Procedure or under a separate procedure outlined by the Guide. This second option requires different information based upon the grounds for alleged invalidity of the patent claims

If the petitioner asserts invalidity over a non-published public disclosure, the petitioner must identify the names and contact information for people (other than those providing declarations or affidavits) who are reasonably likely to have information regarding the prior disclosure, indicate which of the identified people are under control of the petitioner or otherwise consented to appear for testimony, indicate which of the identified people are represented by the petitioner’s counsel, and identify all documents and things in the petition’s control relating to the disclosure.

If the petitioner asserts invalidity on obviousness, the petitioner must identify the names and contact information for people (other than those providing declarations or affidavits) who are reasonably likely to have information regarding the secondary indicia of non-obviousness, indicate which of the identified people are under control of the petitioner or otherwise consented to appear for testimony, indicate which of the identified people are represented by the petitioner’s counsel, and identify all documents and things in the petition’s control relating to the secondary indicia of non-obviousness.

Further mandatory discovery includes production of information inconsistent with a position taken by a party and production of every document relied upon by a party in a filing. All such production must be made together with filing of that paper. For example, a petitioner’s initial disclosures and any documents relied upon should be filed with the petition requesting cancellation of a claim. A patent owner must file any documents relied upon in a preliminary or ordinary response with that paper.

Uncompelled testimony may be made at any time to support a filing and is made by affidavit. Cross-examination of affidavit testimony and compelled testimony will proceed by deposition during the above time periods unless otherwise agreed by the parties. Depositions may be taken anywhere in the United States, and the party introducing the witness will bear the costs associated with the discovery associated with that witness. Depositions are limited to seven hours for compelled direct testimony, four hours for cross-examination, and two hours for redirect examination. With respect to uncompelled direct testimony, depositions are limited to seven hours of cross-examination, four hours for redirect examination, and two hours for recross-examination.

Objections to the admissibility of testimony must be made during the associated deposition, and evidence to cure the objection must be provided at the deposition unless otherwise agreed. Objections to other evidence must be served within 10 business days of the institution of a trial or within five business days of service of the evidence if made after trial began.

Evidence should be limited to the substance of the request. Testimony on United States patent law or examination practice will not be admitted and test data must be supported by testimony regarding how the test was made, how the test data is being used, how the test is regarded in the art, and any other information necessary to help the PTAB evaluate the test and data.

Additional discovery may be had by agreement of the parties.

Claim Construction

Claim terms will be given their broadest reasonable interpretation as understood by one of ordinary skill in the art and consistent with the disclosure. Where a party believes that a specific term has a meaning other than its ordinary meaning, the party should provide a proposed construction of the particular term and the support for such a construction.

Oral Hearing

Oral arguments will be held only on request by one of the parties. Generally, the petitioner will argue first with the patent owner providing a rebuttal, but the PTAB may reverse this order where appropriate. For example, the patent owner may argue first if the only remaining issue is where a proposed amendment overcomes the petition’s grounds for unpatentability. Demonstratives are generally discouraged in favor of a handout or binder to be provided to the PTAB panel with numbering to facilitate accessing the appropriate exhibits during oral argument.

Live testimony before the PTAB will be rare, but the PTAB may require live testimony if the witness’s credibility or demeanor is considered critical to the weight of the testimony.


The parties may stop a trial at any time pursuant to settlement. The PTAB will be available to facilitate settlement and may require settlement discussions.

A copy of any agreement between the parties regarding the termination of a trial must be filed with the PTAB. Any party to the settlement may request to have the agreement treated as confidential and kept separate from the files of the patent involved in the trial. Such request may be filed with the agreement, in which case the settlement agreement would remain confidential and only be available to a government agency or upon a showing of good cause.

For more information, please contact Fitch Even partner Nicholas T. Peters.

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