Patent Trial and Appeal Board Motion Practice

This publication takes you through the PTAB motion practice from the AIA trials proceedings to discovery and evidentiary objections in PTAB actions. If you have a case before the PTAB, this book is invaluable when dealing with deadlines and procedures for all types of actions in this body.
Publisher: LexisNexis
Print Book :1 Volume, Softbound, Updated Annually
2016 Edition
In Stock
ISBN: 9781632828903
Publisher: LexisNexis
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Product details

This publication is to help you navigate the often confusing and difficult deadlines and procedures of the PTAB motion practice.

This publication covers everything you need to know about the PTAB motion and trial practice, including:

•  Evaluation of advantages and disadvantages of the various AIA trials
•  Discovery
•  Petitions and responses (as well as deadlines)
•  Motion practices along with deadlines
•  Admission to practice before the PTAB
•  Protective Orders
•  Joinder
•  Expert testimony
•  Appendix, including the text of the PTAB Trial Rules

Author, Walter Scott, is counsel at Alston & Bird's New York office. Mr. Scott's practice has focused on all aspects of patent and trade secret litigation and counseling involving a wide-range of issues and technical disciplines, including consumer products, pharmaceutical and veterinary products, agricultural products, metallurgy, office furniture, medical devices, polymers and business methods. He has considerable experience in patent re-examinations, and interference proceedings, as well as other domestic and foreign patent prosecution matters. Mr. Scott has advised clients with respect to transactional matters including their rights in patents, trade secrets, due diligence investigations and distribution, transfer, valuation and licensing of technology.

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Table of Contents

1.01 Introduction

1.02 The AIA Trial Proceedings

[1] PTAB Practice and Administrative Law

[a] Appellate Review

[b] Binding Authority

[c] Administrative Procedure Act

[2] An Introduction to the Four new AIA Trials

[a] Inter Parties Review

[b] Post-Grant Review

[c] Transitional Covered Business Method Post-Grant Review

[d] Derivation proceedings

[3] Disadvantages and Advantages of AIA Trials

[a] Disadvantages/Limitations

(1) Standing

(i) IPR Trial Standing Requirements

(ii) PGR Trial Standing Requirements

(iii) CBM Trial Standing Requirements

(iv) DER Trial Standing Requirements

(2) Grounds on which Validity may be Challenged

(i) in an IPR Petition

(ii) in a PGR Petition

(iii) in a CBM Petition

(iv) in a DER Petition

(3) Limited Discovery in AIA Trials

(4) Ballpark Costs for an AIA Trial

(5) Each Type of AIA Trial has a Distinct Timing Window

(i) For an IPR Petition

(ii) For a PGR Petition

(iii) For a CBM Petition

(iv) For a DER Petition

(6) AIA Trials Create an Estoppel

(i) Estoppel following an IPR Proceeding

(ii) Estoppel following a PGR Proceeding

(iii) Estoppel following a CBM Proceeding

(iv) Estoppel following a DER Proceeding

[b] Potential Advantages

(1) Prompt resolution

(2) Presumption of validity/Burden of Proof

(3) Composition of the Tribunal

(4) Broadest Reasonable Claim Interpretation

(i) The Actual Methodologies

(ii) An Evidentiary Difference

(iii) A First Institutional Difference

(iv) A Second Institutional Difference

(v) A Third Institutional Difference

(vi) A Fourth Institutional Difference

(vii) Despite the Differences, the Results are Largely the Same

(viii) The Exception to BRI Before the Board

(5) Potentially lower total legal fees

(6) Limited discovery

[c] Disadvantages and Advantages of AIA Trials from the Patent Owner's Prospective

2.01 Inter Parties Review

3.01 Post-Grant Review

4.01 Transitional Covered Business Method Post-Grant Review

[1] at least one challenged claim is directed to a covered business method

[a] covered business method

[b] not a technological invention

[2] Grounds for Challenging Validity in a CBM Petition

[a] Prior art

(1) only 102(a) references

(2) 102(e) references not permitted

[b] Section 101

[c] Section 112

[3] Discovery- Good Cause Showing

5.01 Derivation proceedings

6.01 Petitions, Preliminary Responses, and Responses

[1] Petitions

[a] IPR Petitions

(1) Asserting Anticipation

(2) Asserting Obviousness

(3) Priority and Invention Date Issues

[b] PGR Petitions

[c] CBM Petitions

[d] DER Petitions

[e] Practice Point

[2] Patent Owner's Preliminary Response

[a] Petitioner is barred from seeking an AIA Trial

(1) Petitioner Previously filed a DJ Complaint Alleging Patent Invalidity Cannot have an AIA Trial Instituted

(2) Patent Owner Served Petitioner with a Complaint for Patent Infringement more than a year before Petitioner filed its Petition

(3) Standing and Jurisdiction for a CBM Petition

[b] Highlight Weaknesses in Petitioner's Showing of Unpatentability

[c] Petitioner's Claim Construction is Improper

[d] Petition contains Prior Art or Arguments that were Previously Considered by the Office

[e] Petition Fails to Identify All Real Parties-In-Interest

[f] Supporting Evidence for the Preliminary Response

[g] Objective Indicia

[3] Sur-Replies

7.01 Motion Practice before the PTAB

[1] The Rules of Practice concerning Motions

[a] 42.20

[b] 42.22

[c] 42.23

[d] 42.24

[2] In General

[3] Page Limits for Briefs

[4] Timing

[5] Exhibits

8.01Admission to practice before the PTAB

[1] Practitioners Registered to Practice before the U.S. Patent and Trademark Office in patent cases

[a] § 11.5 Register of attorneys and agents in patent matters; practice before the Office

[2] Motion for Admission Pro Hac Vice

[a] The Rules of Practice concerning Pro Hac Vice Admissions

(1) 42.10 Counsel

[b] The Motion for admission pro hac vice

(1) timing

(2) content

[c] Disqualification of Counsel

[d] Motion to Withdraw

[e] Example of a successful motions(with declarations)

(1) Motion for Pro Hac Vice Admission of Colby B. Singer

9.01 Discovery in AIA Trials

[1] The Rules of Practice concerning Discovery

[a] 37 C.F.R. § 42.51 Discovery

[b] Discussion of how 37 C.F.R. § 42.51 in the Office Patent Trial Practice Guide and in the Board's decisions

(1) Mandatory Initial Disclosures

(2) Routine Discovery

(3) Additional Discovery

(a) The Garmin Factors

(b) The Garmin Factors adapted for PGR and CBM Trials

(c) Discovery found to meet the Garmin Factors

[c] 37 C.F.R. § 42.52 Compelling Testimony and production

(1) Introduction

(2) 37 C.F.R. § 42.52 Compelling Testimony and production

(3) Decisions applying 37 C.F.R. § 42.52

[d] 37 C.F.R. § 42.53 Taking testimony

(1) PTAB Interference Cross Examination Guidelines and AIA Board Decisions regarding the conduct of counsel during depositions

[e] E-Discovery in AIA Trials

10.01Protective Orders and Motions to Seal

[1] AIA Trials are open to the public

[a] Representative Garmin Decisions

[2] The Rules of Practice concerning Motions to Seal, and Protective Orders

[a] 42.14 Public availability

[b] 42.54 Protective order

[c] 42.55 Confidential information in a petition

[3] A Proposed Protective Order

[4] Good Cause to Seal

[a] What the Board has found to constitute Good Cause to Seal

[b] What the Board has found does not constitute Good Cause to Seal

[c] Implicit in a showing of Good Cause to Seal is showing that the Information to be Sealed has not been published or otherwise made public

[5] Merely filing a paper for the "Parties and Board Only" precludes public access to the paper so filed, but unless the filing in this manner is authorized, the Board may expunge the paper

[6] The Grant of a Motion to Seal is Temporary Relief

11.01 Expungement

[1] During the Proceeding

[a] The Regulation Granting the Board authority to manage its record

(1) 42.7 Management of the record

(2) At the end of the Proceedings

12.01 Motion to Expedite


[1] The pertinent statutory and regulatory provisions

[a] 35 U.S.C. §§ 316(a)(9) and(d)

[b] 35 U.S.C. §§ 326(a)(9) and(d)

[c] 37 C.F.R. §§ 42.107 and 42.121

[d] 37 C.F.R. §§ 42.207 and 42.221

[2] Office guidance on how to make a motion to amend

[a] The Office Patent Trial Practice Guide

(1) Guidance on a First Motion to Amend

(2) Additional Motions to Amend

(3) Motion to Amend Practice

(4) Motion to Amend Practice in a Derivation Trial

(5) Motion to Amend Practice Tips

(6) A Hypothetical Motion to Amend from the Office Patent Trial Practice Guide

The Hypothetical Original patent claims

(i) The Hypothetical Claim listing in a motion to amend

(ii) Hypothetical Discussion of proposed changes

(iii) Hypothetical Support for claimed subject matter

(7) Petitioner Opposition to Amendment

(8) Patent Owner Reply to Opposition to Amend

[b] Guidance on Motions to Amend from Decisions of the Board

(1) Idle Free Sys., Inc. v. Bergstrom, Inc.

(2) Nichia Corp. v. Emcore Corp

(3) ZTE Corp., v. ContentGuard Holdings, Inc.

(4) IFF v. U.S. Dep't. Agric.

(5) Corning Optical Communications RF, LLC, v. PPC Broadband, Inc.

(6) Masterimage 3D, Inc., v. Reald Inc.

(7) Riverbed Tech., Inc., v. Silver Peak Sys., Inc. I

(8) Riverbed Tech., Inc., v. Silver Peak Sys., Inc. II

[c] Second Motions to Amend

[d] The successful motions to amend

14 Joinder

[1]The Rules of Practice concerning Motions to Join or Consolidate

14.02 What the PTAB has said is necessary for a successful motion

[1] timing

[a] Inter Partes Review Non-PTAB Trial Other Proceeding

(1) 42.122 Multiple Proceedings and Joinder

[b] Post Grant & Covered Business Method reviews

[c] Derivation

[2] Other Patent Office proceedings involving the same patent

[a] non-PTAB Trial other proceedings

[b] PTAB Trial other proceedings

(1) The original Petitioner files a second Petition challenging the same patent

(2) A second Petitioner files a Petition Echoing a Previously filed Petition

(i) Me-Too Petitions are Commonly Joined with the first Petition

(a) Me-Too Petitioner has a very limited say in the Trial

(3) A second Petition is Filed Distinct from the First Petition

[3] Joint Petition and Severance

15.01 Standing

16.01 Terminate/Adverse Judgment

[1] The Rules of Practice concerning Motions to Terminate or for Adverse Judgment

[a] 42.72 Termination of Trial

[b] 42.73 Judgment


[1] Evidence

[a] 42.61Admissibility

[b] 42.62 Applicability of the Federal rules of evidence

[c] 42.63 Form of evidence

[2] Objections

[a] 42.64 Objection; motion to exclude

[b] 42.53 Taking testimony

[3] Supplemental Evidence

[4] Supplemental Information

[a] 42.123 Filing of supplemental information

[5] Motion to Exclude

[6] Expert Testimony

[a] 42.65 Expert testimony; tests and data

18.01 Observations

19.01 Other Relief/Waiver of the Rules

20.01 Miscellaneous

21.01 Supplemental Information

22.01 Sanctions

23.01 Alternative Routes to Amending Claims

[1] Re-examination

[2] Reissue


A. 37 C.F.R part 42, PTAB Trial Rules

1. General PTAB Trial Rules

2. IPR Trial Rules

3. PGR Trial Rules

4. CBM Trial Rules

5. Derivation Trial Rules

B. Scheduling Order

C. Default Protective Order

D. Office Trial Practice Guide

E. Resources