The USPTO has released an update to the Trial Practice Guide for AIA trial proceedings. The update revises the Trial Practice Guide to reflect rule and policy changes implemented after the last update to the Trial Practice Guide in August 2018, and provides additional guidance on trial practice before the PTAB.

Additional discovery: The update sets forth factors that the Board may consider when deciding requests for additional discovery, including in situations involving real parties-in-interest inquiries and evidence of secondary considerations. The update cites decisions where the Board granted and denied additional discovery requests involving real party-in-interest and secondary considerations issues.

Claim construction: The update reflects the previous change in claim construction standard applied in AIA trial proceedings to the standard applied in federal courts and the ITC. The update also provides the general procedure for raising and responding to claim construction arguments during the course of a trial proceeding. The update sets forth non-exclusive factors that the Board may consider when weighing prior claim construction determinations in a parallel district court action or ITC proceeding.

Testimonial evidence with a preliminary response: The update discusses procedure relating to testimonial evidence submitted with a patent owner preliminary response. A patent owner may elect to affirmatively withdraw testimony submitted with a preliminary response in the event trial is instituted. The update states that “the Board does not expect that [petitioner requests to file a reply addressing preliminary evidence] will be granted in many cases due to the short time period the Board has to reach a decision on institution.”

Discretion to institute: The update sets forth information to be provided by petitioners if there are multiple petitions filed at or about the same time challenging the same patent. The update states that in such situations, the petitioner should identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions.

Motion to amend: The update discusses motion to amend procedure, including the pilot program which allows patent owners to (1) request preliminary guidance from the Board in its first motion to amend, and (2) file a revised motion to amend.  The update also discusses due dates, evidentiary standards, and briefing requirements relating to motions to amend.

Joinder: The update provides factors that the Board may consider when determining whether to grant a motion for joinder, including party joinder and issue joinder.

Remand: The update outlines procedures to be followed when a case is remanded from the Federal Circuit.  The PTAB has set a goal to issue decisions within six months of receipt of the mandate from the Federal Circuit.

Protective orders: The update provides procedures for parties to request modifications to the Board’s default protective order.  The Board will generally accept proposed changes to the default protective order agreed to by the parties if they are “consistent with the integrity and efficient administration of the proceedings.”

The July 2019 update to the Trial Practice Guide discussed above is available here.

The August 2018 update to the Trial Practice Guide is available here.

The August 2012 Trial Practice Guide is available here.