October 20, 2019

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PTAB Issues a Second Update to the AIA Trial Practice Guide

The Patent Trial and Appeal Board (PTAB) has just issued a second update to the American Invents Act (AIA) Trial Practice Guide.  

The updated sections of the Trial Practice Guide include:

  • Guidance regarding court reporters on conference calls with the Board (Section I.A.2);

  • Guidance on expunging information from the record if a motion for protective order is not granted (Section I.E.4);

  • Factors that may be considered by the Board in determining when additional discovery will be granted (Section I.F.2);

  • Guidance on live testimony during oral hearing (Section I.F.5);

  • The revised claim construction standard to be used in IPR, PGR, and CBM proceedings (Section II.B.6); 

  • The submission of testimonial evidence with a patent owner preliminary response (Section II.C);

  • Guidance regarding the Board’s decision on whether to institute, including information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent or if the same or substantially same prior art or arguments were previously presented to the Office during examination (Section II.D.2-3);

  • Guidance on Motion to Amend practice, including the new pilot program (Section II.G);

  • Guidance on the grounds that may be raised in an Opposition to a Motion to Amend (Section II.H);

  • Guidance on replies (Section II.I);

  • Factors that may be considered by the Board in determining whether to grant a motion for joinder (Section II.J);

  • Procedures to be followed when a case is remanded (Section II.O-P); and

  • Procedures for parties to request modifications to the default protective order (Appendix B).

The Updated Trial Practice Guide, containing only the updated sections, is available at the following link: Trial Practice Guide Update July 2019. The original full version of the Trial Practice Guide (originally issued in August 2012) and the first update issued in August 2018 are available at the following links: Trial Practice Guide August 2012 and Trial Practice Guide Update August 2018. A summary of the first update is available at the following link: PTAB Issues Update to Trial Practice Guide, August 2018

The Office indicates that it anticipates releasing further updates to the Trial Practice Guide on a section-by-section basis to take into account feedback from stakeholders, changes in controlling precedent or applicable regulations, or further refinement of the Board’s practices over time.

© Polsinelli PC, Polsinelli LLP in California

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Having worked on more than 100 inter partes reviews and reexaminations, Margaux Savee has a thorough understanding of what it takes for clients to successfully navigate the patent post-grant review process. Adept at managing large and complex international patent portfolios, Margaux’s extensive patent prosecution, litigation and post-grant review experience allows her to achieve positive results for clients by successfully managing multi jurisdictional disputes, drafting patent licensing agreements and skillfully leading mediation and settlement negotiations.

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