On Monday, August 13, 2018, the U.S. Patent Trial and Appeal Board (PTAB) issued a notice updating the Trial Practice Guide. The update provided revisions to Sections I.G. (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order). The update further contemplates additional revisions that will be released on a rolling basis when applicable.
For practitioners and clients alike, the biggest change is the authorization of sur-replies to principle briefs, (in reply to Petitioner’s reply to a Patent Owner’s Response or in reply to Patent Owner’s reply to Opposition to Motion to Amend) effectively changing the party who gets the last word in most trial briefings from the moving party to the opposing party. The authorization for sur-replies will normally be contained in the scheduling order accompanying an institution decision going forward.
Sur-replies should not be used to argue new arguments; they serve to replace the observations and provide patent owner (and petitioner in the case of motions to amend) the opportunity to not only call attention to certain portions of testimony, but to rely on such testimony to respond to arguments in the reply paper. Sur-replies should not be used to provide new evidence that should have been included in the first paper. Notably for Petitioners in a post-SAS landscape, the update clarifies that Petitioner’s reply to a Patent Owner Response may address points raised by the Board’s institution decision, even if the points were not addressed in the Patent Owner’s Response.
The updated Trial Practice Guide also provided guidance regarding the proper use of expert testimony (use to provide support for motivation to combine, explain the cited references, provide context for the level of ordinary skill in the art, provide support for and rebuttal against any alleged secondary considerations). The update instructs practitioners that the Board is afforded great leeway in assigning the appropriate weight to expert testimony, and that almost all expert testimony is relevant, as long as it “help[s] the trier of fact understand the evidence or to determine a fact in issue.” However, the Trial Practice Guide cautions that expert testimony is not a substitute for disclosure in a prior art reference.
As additional revisions are released additional summaries will be provided. For those curious to review the revisions to the Trial Practice Guide, click here.