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A Review of the PTAB Trial Practice Guide August 2018 Updates

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The United States Patent and Trademark Office (USPTO) issued the first Trial Practice Guide (TPG) in 20121 to provide guidance to the public on standard practices before the Patent Trial and Appeal Board (PTAB) in the post-grant trial procedures implemented following the Leahy-Smith America Invents Act (AIA). Based on its experiences during the first six years of proceedings and court decisions during the same period, the USPTO updated particular sections of the TPG in August 2018. See Trial Practice Guide Update August 2018. Future updates to the TPG may issue on a rolling basis.

The August 2018 updates revised Sections I.G (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order). Some revisions include new requirements or procedures, while others provide further explanation of PTAB practices.

For example, while the 2012 TPG provided for expert testimony, new Section I.G describes in further detail when and how a party may use expert testimony. Expert testimony may be submitted with the petition, preliminary response, and at other appropriate stages as ordered or allowed by the panel overseeing the trial, and is generally permitted where the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue. In response to Federal Circuit cases, the TPG does not require a perfect match between an expert’s experience and the relevant field, and a person may not need to be a person of ordinary skill in the art to testify as an expert.2 Additionally, the section cautions that a party may not circumvent page or word limits by incorporating arguments by reference from one document into another. Thus, expert testimony incorporated without explanation may not be considered by the board.3 Furthermore, a petitioner asserting anticipation cannot rely on an expert to supply disclosure of a limitation that is not found in a prior art reference—the expert testimony may explain the contents of patents and printed publications but is not a substitute for prior art disclosure.4

Revised Section II.A.3 introduces word count limits in place of some page limits. Petitions for inter-partes review (IPR) may include up to 14,000 words; petitions for post grant review (PGR) and covered business methods review (CBM) may include up to 18,700 words. Replies to patent owner responses to petitions are limited to 5,600 words. Sur-replies are limited to the same word or page limits as the reply. For all other briefing, page limits apply. One potential benefit of changing from page to word count is that a word count facilitates presentation of arguments in the format a party determines most effective. For example, a party need not base its decision of whether to include a claim chart based on whether the chart is an efficient use of space on a page.

Section II.D.2. entitled “Considerations in Instituting a Review” permits the PTAB to consider whether the same or substantially the same prior or art or arguments were previously presented to the USPTO. The August 2018 revisions expand the guidance to include the PTAB’s seven General Plastics 5 factors, which are related to prior actions of the petitioner and are intended to prevent abuse of the review process by “follow on” petitions challenging the same patent. The expanded guidance also includes the PTAB’s Becton-Dickinson factors related to similarity of prior art references.6 Additional factors to consider include other proceedings related to the same patent, such as at district courts or the International Trade Commission (ITC).7

One of the more significant updates is to section II.I, which now permits sur-replies to principal briefs. In April 2018, the Supreme Court required the PTAB to issue a final decision as to any patent claim challenged by the petitioner, rejecting the PTAB’s prior practice of partial institution on a subset of challenged claims.8 In response to the Supreme Court, the PTAB will now permit the petitioner, in its reply brief, to address issues in the institution decision; and the patent owner will be allowed to further address the institution decision in its sur-reply. The sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Formerly, a patent owner was not guaranteed a sur-reply. The 2018 updates provide the patent owner with the last word in the briefing.

Revised Section II.K., regarding challenges to admissibility of evidence, adds guidance on motions to strike to the original guidance on motions to exclude. The revised section describes how and when the two different motions should be used.

A motion to exclude evidence needs to explain the basis and grounds for each objection, identify where in the record an objection was originally made, and identify where in the record the evidence sought to be excluded was relied upon by an opponent. The PTAB generally waits until after the oral hearing to decide the merits of any motions to exclude. If a party believes the evidence is central to the party’s dispute, then the party may request a pre-hearing conference to seek early resolution to exclude on a limited number of objections.

A motion to strike may be used if a party believes an opposing party’s brief raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply. Alternatively, a party may request authorization for further merits briefing, such as a sur-reply, to address the merits of any newly-raised arguments or evidence. Striking the entirety of a party’s brief is an exceptional remedy expected to be rarely granted. However, when a reply clearly relies on a new theory not included in prior briefing, and where addressing the new theory during oral hearing would prejudice the opposing party, striking the portion of the brief containing that theory may be appropriate. Authorization to file a motion to strike should be requested within one week of the allegedly improper submission.

Revised Section M includes updates regarding oral hearings. Either party may now request a pre-hearing conference on a limited and agreed upon set of issues. At the oral hearing, a petitioner generally will argue first, followed by the patent owner, after which a rebuttal may be given by the petitioner. To preserve the general order, absent special circumstances, a petitioner will not be permitted to reserve for rebuttal more than half the total time allotted for argument. Although live testimony is rarely permitted, a request for live testimony is more likely to be granted when the demeanor of a witness may be used to evaluate the witness’s credibility, such as where an inventor is attempting to establish prior reduction to practice or when the oral testimony is critical to a case-dispositive issue.9

The updated TPG also includes a sample scheduling order in Appendix A. The sample order is a useful template that prevents the parties from having to construct the timeline from various rules in other sections of the TPG.

In summary, none of the TPG updates should surprise patent practitioners that have been following PTAB activity over the past six years. The updated TPG consolidates six years of various PTAB procedures, PTAB decisions and court decisions for easy reference, and provides guidance on how the PTAB will apply those decisions. The updated TPG succeeds in its stated goal of providing public guidance for standard practices during AIA trials before the PTAB.

1 See 77 Fed. Reg. 48,756 (Aug. 14, 2012)
2 citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010) and Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008)
3 citing Cisco Systems, Inc. v. C-Cation Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)
4 citing K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014)
5 General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (precedential)
6 Becton Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (informative)
7 citing NetApp, Inc. v. Realtime Data LLC, Case IPR2017-01195 (PTAB Oct. 12, 2017)
8 SAS Institute Inc. v. Iancu, __ U.S. __, 2018 WL 1914661 (Apr. 24, 2018)
9 citing K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014)

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