Expired Patents May Follow Shorter Trial Schedule

Some months back, I pointed out how the post-grant challenges of the USPTO’s Patent Trial & Appeal Board (PTAB) now follow a (7) month schedule. Given the 12-month statutory mandate to conclude such post-grant proceedings, the (7) month schedule allows for a (5) month back end for the Board to draft and issue the written decision. This (7) month schedule is down from the more generous (9) month schedule employed in many 2012-13 filings.

For those challenging/defending expired patents, prepare for an even shorter schedule.
Below is a typical scheduling Order for an IPR/CBM proceeding of an unexpired patent, which includes various amendment related scheduling shown in red:

Trial Order…………………………………………………………..February 12, 2014
DUE DATE 1……………………………………………………….March 12, 2014
Patent owner’s response to the petition
Patent owner’s motion to amend the patent
DUE DATE 2………………………………………………………June 12, 2014
Petitioner’s reply to patent owner response to petition
Petitioner’s opposition to motion to amend
DUE DATE 3……………………………………………………..July 11, 2014
Patent owner’s reply to petitioner opposition to motion to amend
DUE DATE 4……………………………………………………..August 1, 2014
Petitioner’s motion for observation regarding cross-examination of reply witness
Motion to exclude evidence
Request for oral argument
DUE DATE 5…………………………………………………….August 14, 2014
Patent owner’s response to observation
Opposition to motion to exclude
DUE DATE 6……………………………………………………August 21, 2014
Reply to opposition to motion to exclude
DUE DATE 7…………………………………………………..September 4, 2014
Oral argument (if requested)

It is well established that an expired patent cannot be amended. So, DUE DATE 3 of the above schedule becomes entirely expendable in such cases. The schedule below reflects the difference in schedule of an expired patent. This schedule is used in Cisco Systems Inc. v. AIP Acquisition LLC (IPR2014-00247), which involves an expired patent.

Trail Order………………………………………………………………………………….. May 27, 2014
DUE DATE 1……………………………………………………………………………….August 18, 2014 (corrected 6/26, Paper 17) 
Patent owner’s response to the petition
DUE DATE 2……………………………………………………………………………….November 14, 2014
Petitioner’s reply to patent owner response to petition
DUE DATE 3…………………………………………………………………………………………..N/A
DUE DATE 4………………………………………………………………………………December 6, 2014
Petitioner’s motion for observation regarding cross-examination of reply witness
Motion to exclude evidence Request for oral argument
DUE DATE 5……………………………………………………………………………..December 19, 2014
Patent owner’s response to observation Opposition to motion to exclude
DUE DATE 6……………………………………………………………………………..December 26, 2014
Reply to opposition to motion to exclude
DUE DATE 7…………………………………………………………………………….January 7, 2015 Oral argument (if requested)

By eliminating the (1) month allocation for preparation of a response to a (non-existent) amendment, the trial schedule is accelerated by a full month.