By Tom Engellenner
In addition to the pilot program to assist patent owners in presentation of claim amendments and a proposed rule change to shift of burden of persuasion as to amended claims (both of which were discussed previously in Part II of this series), the USPTO made another major policy pronouncement in 2019: a second revision to the Trial Practice Guide – the procedural handbook for all administrative trials under the America Invents Act (AIA): covered business methods (CBR) review, inter partes review (IPR) and post grant review (PGR).

The TPG was first published in 2012 at the same time as the rules governing the AIA trials.  A first update was issued in August 2018.  The second update was published in July 2019.  (The USPTO also published a consolidated guide incorporating the original guidance and the two updates in November 2019.)  The 2019 update to the TPG provides almost no surprises.  It does, however, show how AIA proceedings have evolved since 2012 and provides some hints as to where the PTAB is going.

For example, the updated TPG acknowledges the PTAB’s abandonment of the much-criticized “broadest reasonable interpretation” standard for claim interpretation in favor of the Philip’s standard used in federal courts (ordinary or customary meaning).  The update also notes the PTAB will give “appropriate weight” to claim constructions by other tribunals, suggesting that we should see fewer cases of divergent interpretations of what a claim (or claim element) means at the PTAB when a federal district court has already issued a claim construction order in concurrent patent infringement litigation.

On discovery in AIA trials, the update acknowledges the PTAB practice that a motion for “additional discovery” (beyond the opportunity to cross examine the other party’s expert) will only be granted in IPRs if the motion meets the “interests of justice” standard, guided primarily by the factors set forth in 2013 in the Board’s precedential decision in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case (IPR2012- 00001). (In CBMs, the PTAB panels will be guided by similar factors under the “good cause” standard as set forth in 2013 in the Bloomberg Inc. v. Markets-Alert Pty Ltd. case (CBM2013-00005)).  The update notes that a party moving for additional discovery will need to address five of the so-called Garmin factors, principally that the additional discovery is needed based on more than a possibility and mere allegation, unavailable by other means, clear and understandable and not overly burdensome.

“Live testimony” before the PTAB will remain elusive because the TPG update explains that “credibility of experts often turns less on demeanor and more on the plausibility of their theories.” However, the update does hint that PTAB panels may be more receptive to live testimony in derivative proceedings where the allegation is that the purported inventor misappropriated the work of another.   In such cases, the update notes that the demeanor of the witnesses may be more critical to assessing creditability.  The update references the 2014 precedential decision in K-40 Elecs., LLC v. Escort, Inc., (IPR2013-00203) for further guidance on the factors to be considered when considering whether live testimony is warranted.

The July 2019 update also provides additional guidance on the considerations for instituting a trial, parallel petitions challenging the same patent, motions for joinder, motions to amend, and reply briefs.