The Patent Trial and Appeal Board
By Eugene T. Perez and Utsav Gupta
The U.S. Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) conducts inter partes review (“IPR”) and post-grant review (“PGR”) of U.S. patents. The membership includes “[t]he Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges…”.1 The USPTO has published rules in August of 2012 regarding these procedures “to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.”2
In an IPR or PGR, a petitioner must make his or her case by the preponderance of the evidence.3 The PTAB will “interpret claims using the broadest reasonable construction.”4 IPR or PGR is heard by at least three members of the PTAB, who are designated by the Director.5
For IPR, the proceeding begins with the filing of a petition consistent with § 311 as amended and other statutory requirements.6 Specifically, the petition must certify that the patent is available for review and that petitioner is not estopped.7 The petitioner must also identify each challenged claim, include specific statutory grounds, provide a claim construction, and identify how the construed claim is unpatentable.8
The Patent Owner (“PO”) may file a preliminary response.9 The PO may also choose to file a simple statement electing not to respond.10 PO’s may also file a motion to amend the claims within this time period.11 A first motion to amend does not require prior authorization, only that the PO confers with PTAB; however, additional motions require authorization.12
There is a limit of 60 pages for petitions requiring IPR and for the PO preliminary response.13 The limit is 15 pages for motions and oppositions.14 Replies to PO responses are limited to 15 pages and replies to oppositions are limited to 5 pages.15 Petitions may be accompanied by a motion to waive the page limits; otherwise, the motion must be granted in advance.16
The PTAB determines whether IPR will be granted.17 For IPR, the PTAB may not authorize IPR unless the petition and response shows there is a “reasonable likelihood” that the petitioner would prevail with at least one of the challenged claimed.18 Multiple matters (e.g., a concurrent ex parte reexamination and inter partes review for the same patent) may involve a stay, consolidation, or termination.19 PTAB performs this analysis “claim-by-claim.”20 A party dissatisfied with the determination may request a rehearing.21
Scheduling Order and Timeline
Along with instating IPR, the PTAB will enter a Scheduling Order with due dates.22 IPR must be completed within one year; however, the time can be extended by up to the six months for good cause, such as joinder.23 Parties may request changes to the due dates at the initial conference call, held one month after the PTAB institutes the trial.24 In the Scheduling Order, parties may also stipulate different dates for Due Dates 1 through 5,25 but no later than Due Date 6.26 Parties may not extend Due Dates 6 and 7.27 A petitioner and a patent owner may terminate (settle) the proceeding with PTAB by filing a written agreement unless the merits have already been decided.28
The Scheduling Order includes an appendix that lists the Due Dates:
1. The PO may file a response and a motion to amend the patent (3 months);
2. Petitioner’s reply to PO’s response, and opposition to the motion to amend (3 months);
3. PO’s reply to the petitioner’s opposition to the motion to amend (1 month);
4. Petitioner’s motion for an observation on the cross-examination of testimony of a reply witness and each party’s motions to exclude evidence and requests for oral argument (3 weeks);
5. PO’s reply to petitioner’s observation on cross-examination testimony and each party’s opposition to a motion to exclude evidence (2 weeks);
6. Each party’s reply for a motion to exclude evidence (1 week); and,
7. Oral argument (set upon request).29
The process might follow this representative timeline:
Discovery and Evidence
Each party will be provided respective discovery periods.30 Parties can request additional discovery using a motion or by agreeing to discovery amongst themselves.31 Parties can also request authorization to compel testimony that may be ex parte and subject to cross-examination, or inter partes.32
Parties may agree to mandatory initial disclosures.33 Two options are available:
1. modeled after Rule 26(a)(1)(A) of the Federal Rules of Civil Procedures that requires the name and contact information of “each individual likely to have discoverable information” and a copy or description of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody or control; and,
2. a more extensive option that includes statements on the basis of existence of an alleged prior non-public public disclosure or alleged obviousness of one or more claims that includes contact information of witnesses likely to have discoverable information and identification of all documents and things within possession, custody or control.34
“[T]estimony may be taken at any reasonable location in the United States.”35 The default time limits are seven hours for direct and cross-examination, four hours for redirect and cross- examination, and two hours for redirect and recross- examination.36
Prohibition of Ex Parte Communications
All substantive communications with the PTAB must include all parties to the proceeding.37 However, the prohibition does not extend to:
1. ministerial communications;
2. conference calls or hearings where opposing counsel declines to participate;
3. informing PTAB about the existence or status of a related proceeding; and
4. reference to a pending case in support of a general proposition.38
The PTAB encourages the use of conference calls.39
A party must designate both a lead and a back-up counsel.40 While the PTAB may authorize counsel pro hac vice upon a showing of good cause, the lead counsel must be registered before the USPTO, along with any other conditions PTAB might place.41
Parties must provide certain mandatory notices:
1. Real party-in-interest or privy to assist members of PTAB in identifying potential conflicts;
2. Identification of related matters that would affect, or be affected by, a decision in the preceding; and,
3. Identification of service information, including a proper correspondence address.42
Public Availability and Confidentiality
A record is publicly available. However, protective orders and even a settlement agreement may seal confidential information identified consistently with Federal Rule of Civil Procedure 26(c)(1)(G).43 A motion to seal, which may include a proposed protective order, may be filed concurrently with the filing of the document or thing.44
- 35 U.S.C. § 6(a) (Lexis 2013).
- Donald S. Chisum, Chisum on Patents § 6 (3d ed. 2013) (citing 77 Fed. Reg. 48680).
- 77 Fed. Reg. 48756, 48763 (Aug. 14, 2012).
- Id. at 48766.
- 35 U.S.C.S. § 6(c) (Lexis 2013).
- 77 Fed. Reg. 48756 (Aug. 14, 2012).
- Id. at 47863.
- Id. at 48756.
- Id. at 48757.
- Id. at 48766.
- Id. at 48763.
- 77 Fed. Reg. 48612, 48673 (Aug. 14, 2012) (to be codified at 37 C.F.R. § 42.24).
- Donald S. Chisum, Chisum on Patents § 6.3.3 (3d ed. 2013).
- 77 Fed. Reg. 48764 (Aug. 14, 2012).
- Id. at 48756.
- Id. at 48757.
- 77 Fed. Reg. 48680, 48727 (Aug. 14, 2012) (to be codified at 37 C.F.R. § 42.100).
- 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
- Id. at 48768.
- Id. at 48757.
- Id. at 48768-69.
- Id. at 48761.
- Id. at 48762.
- Id. at 48758.
- Id. at 48759-60.
- Id. at 48760.
- Id. at 48760-61.
- 35 U.S.C.S. § 319 (Lexis 2013).
- Donald S. Chisum, Chisum on Patents § 6.3.8 (3d ed. 2013).