With the U.S. Patent and Trademark Office Trial Practice Guide update released last month, a significant change was made to the substantive filings. In the revised section II.I. (Sur-replies), the following language changes the rules:

“Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition

The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves trials at the U.S. Patent Trial and Appeal Board toward being the most likely forum for first consideration of claim construction and patent validity, and perhaps a shift toward becoming a truer “alternative” to litigation, as Congress envisioned under the America Invents Act.

In the first five years since PTAB trials went into effect, the result has been an increase in PTAB trials running concurrently with district court litigation pertaining to the same patent. Indeed, since the inception of PTAB trials, a majority of cases have had co-pending litigation.


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