On August 13, 2018, the PTO published a public notice announcing the first update to the Office Patent Trial Practice Guide since its original introduction in August 2012. The update adds or substantially revises several procedural guidelines for trial proceedings—most notably, the Board will now permit sur-replies under the standard scheduling order in most cases. The update also addresses the role of expert testimony, motions to exclude and motions to strike, live testimony at oral hearing, and factors affecting the Board’s discretion to decline institution.
The August 2018 update to the Trial Practice Guide is available here, and the original 2012 Trial Practice Guide remains available here.
Details on key provisions in the Trial Practice Guide update are provided below.
The update revised Section II.I. of the Trial Practice Guide to permit the following sur-replies during regular briefing: a patent owner sur-reply to the petitioner’s reply, and a petitioner sur-reply to a patent owner’s reply in support of a motion to amend. Sur-replies in those contexts now “normally will be authorized by the scheduling order entered at institution.” The new sur-reply procedure replaces the prior practice of filing observations on cross-examination. Sur-replies on motions remain disfavored.
New Section I.G. provides additional guidance on the use of expert testimony. The guidance emphasizes and consolidates several principles gleaned from the Federal Rules of Evidence, Federal Circuit precedent, and notable patterns in the Board’s own decisions.
As the Board has often held, the expert testimony must be based on sufficient facts and data and cannot, on its own, serve as a gap-filler to take the place of a prior art disclosure. As succinctly stated in the update, “expert testimony may explain ‘patents and printed publications,’ but is not a substitute for disclosure in a prior art reference itself.”
Regarding expert qualifications, there is “no requirement for a perfect match” between an expert’s experience and the relevant field and that an expert may not need to qualify as a person of ordinary skill in the art to provide helpful testimony. An expert’s experience need only provide “sufficient qualification in the pertinent art.”
Motions to Exclude or Strike
The update also greatly expanded on prior guidance regarding challenges to admissibility and added new guidance on motions to strike during briefing (Section II.K.).
Motions to Exclude: The update emphasizes that motions to exclude are for challenging admissibility and not appropriate for addressing the weight evidence should receive or arguing that arguments or evidence exceed the proper scope of reply or sur-reply. The update also provides for parties to request a conference with the Board before oral hearing to address motions to exclude evidence “so central to the parties’ dispute” that they warrant early resolution.
Motions to Strike: Where a party believes an opponent’s brief improperly raises new issues, relies on untimely evidence, or exceeds the scope of reply, the update presents two choices: the party may request authorization for a motion to strike or request authorization for further merits briefing to respond to the new argument or evidence. The update cautions that the Board is usually capable of identifying new issues or late evidence on its own, and striking part or all of a brief is “an exceptional remedy that the Board expects will be granted rarely.”
The updated Practice Guide includes substantial revisions to guidance on oral hearings in Section II.M. The update may spur increased use of live testimony, which has so far been exceedingly rare in oral hearings. The update notes that while the Board receives “relatively few requests,” it “will permit” live testimony at the oral hearing when requested if the panel believes the testimony will be helpful. Live testimony will not be permitted in every case, but is more likely to be helpful where witness demeanor is important to evaluating credibility or where the testimony is critical to case-dispositive issues. The Board may directly question witnesses presented for live testimony, and such testimony may not address new theories or arguments.
The default time for argument is set at one hour per side, and absent special circumstances, petitioners will not be permitted to reserve more than half of their allotted time for rebuttal. A pre-hearing conference will be available at either party’s request, at which the parties may seek the Board’s guidance regarding issues the panel would like addressed at the hearing, as well as any pending motions to exclude or motions to strike.
Decisions Declining to Institute
The update also consolidates several sources of existing precedent regarding factors that influence institution decisions in Section II.D. Specifically, the update notes the effect of SAS Institute v. Iancu on institution decisions and collects various factors that may affect the Board’s discretion to deny institution under 35 U.S.C. §§ 314(a), 324(a), and 325(d).
The Trial Practice Guide update sets forth several important changes to trial practice and should be mandatory reading for anyone with cases before the Board. The PTO announced that it has elected “to issues updates to the Practice Guide on a section-by-section, rolling basis, rather than a single, omnibus update addressing all aspects of the current Practice Guide,” so further revisions to other selected portions of the Practice Guide should be expected going forward.