Yesterday (July 15th), the PTAB published a second update to its Trial Practice Guide (https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf). This second update is twice as long as the August 2018 update and relies extensively on the many recently-designated precedential and informative decisions. The new second revision touches on many topics, but some of the more interesting changes were in relation to parties filing multiple petitions and the treatment of testimonial evidence in preliminary responses. The Board also more explicitly set out the petitioner’s burden in relation to claim construction, discussed the differing standards for when additional discovery will be granted and provided updates to the default protective order and the treatment of confidential information. As the first and second revisions to the Trial Practice Guide only include the individual sections of the Guide that have been modified, we have prepared an Integrated PTAB Trial Practice Guide that incorporates all revisions to date. We also have shown the changes in Rev. 1 (in red) and Rev. 2 (in blue) in a separate track-changes version.
In relation to multiple petitions challenging the same patent, the Board noted that in its experience, one petition should be sufficient and filing more than one at the same time “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Page 26 (citing 35 U.S.C. § 316(b)). Thus, the Board now suggests that if a petitioner files multiple petitions for the same patent, the petitioner “should” rank the petitions and provide an explanation for the differences between the petitions and why the Board should institute more than one. Page 27. If the petitioner does so, then the patent owner “could” respond to the explanation in its preliminary response. Page 28. This suggestion follows the procedure the panel adopted recently in Comcast v. Rovi, Case No. IPR2019-00279, Paper 7 (April 22, 2019).