Housekeeping Changes & Controlling “Pile On” Petitions

Tomorrow’s Federal Register will notice a second update to the America Invents Acts (AIA) Trial Practice Guide (here).  As practitioners know, this Guide provides additional guidance to practitioners concerning trial practice before the Patent Trial and Appeal Board (PTAB). (The first update came in August of 2018 (here))

The 2019 update mostly revises sections of the Guide that have been outdated since the initial 2012 printing.  For example, the Guide is revised to address:

• Factors that may be considered by the Board in determining when additional discovery will be granted
• The use of the Phillips claim construction standard
• The submission of testimonial evidence with a patent owner preliminary response
• Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent (NEW)
• Motion to amend practice
• Factors that may be considered by the Board in determining whether to grant a motion for joinder
• Procedures to be followed when a case is remanded
• Procedures for parties to request modifications to the default protective order

As noted above, there is a new procedure to combat “pile on” petitions, but aside, from that the changes are simple updates in view of past developments.