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 to a motion to amend) normally will be authorized by the scheduling order entered at institution.” TPG, p. 14.

The new rule permits sur-replies to principal briefs as a matter of right, newly allowing patent owners to have the last word in the briefing, in the form of a Sur-reply to Petitioner’s Reply.  Previously, patent owners’ only substantive response opportunity after a petitioner’s reply was to file observations on cross-examination testimony.

The change notes that sur-replies may not be accompanied by new evidence (deposition transcripts of the cross-examination are allowed, as they would have been via observations on cross-examination).  The sur-reply also should only be responsive to arguments made in the corresponding reply brief or the corresponding declaration testimony.  Finally, the institution decision can be addressed by the patent owner in its sur-reply, so long as it is responsive to the petitioner’s reply.

Sur-replies that are not to a “principal brief” continue to be considered on a case-by-case basis.

Other new substantive rule changes include a new provision for a pre-hearing conference call among the parties and details about lie testimony and sur-rebuttal scope during oral hearings.  In addition, the new rules provide clarification on word and page counts, guidance on expert testimony, instituting decision considerations (under §§ 314(a), 324(a) and 325(d)), and clarification on the distinction between motions to exclude and motions to strike.

The full text of the Trial Practice Guide Update can be found on the USPTO’s website.

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.

Continue Reading Changes in PTAB Trial Practice May Lead to Increase in District Court Stays