Trial Practice Guide

The Office expects that lead counsel will, and back-up counsel may, participate in all hearings and conference calls with the Board and will sign all papers submitted in the proceeding. In addition, the role of back-up counsel is to conduct business with the Office on behalf of lead counsel when lead counsel is not available. Actions not conducted before the Office (e.g., taking of deposition) may be conducted by lead or back-up counsel.

Whether a party who is not a named participant in a given proceeding nonetheless constitutes a “real party-in-interest” or “privy” to that proceeding is a highly fact-dependent question. See generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A CHARLES ALAN WRIGHT, ARTHUR R. MILLER & EDWARD H. COOPER, FEDERAL PRACTICE & PROCEDURE §§ 4449, 4451 (2d ed. 2011) (hereinafter “WRIGHT & MILLER”). Such questions will be handled by the Office on a case-by-case basis taking into consideration how courts have viewed the terms “real party-in-interest” and “privy.” See, e.g., Taylor, 553 U.S. at 893–895 and 893 n.6 (noting that “[t]he list that follows is meant only to provide a framework [for the decision], not to establish a definitive taxonomy”). Courts invoke the terms “real party-in-interest” and “privy” to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Accordingly, courts have avoided rigid definitions or recitation of necessary factors. Similarly, multiple Federal Rules invoke the terms without attempting to define them or what factors trigger their application. See, e.g., Fed. R. Civ. P. 17; Fed. Cir. R. 47.4.

The typical common-law expression of the “real party-in-interest” (the party “who, according to the governing substantive law, is entitled to enforce the right”) does not fit directly into the AIA trial context. See 6A CHARLES ALAN WRIGHT, ARTHUR R. MILLER, MARY KAY KANE, & RICHARD L. MARCUS, FEDERAL PRACTICE & PROCEDURE CIVIL § 1543 (3d ed. 2011) (discussing Fed. R. Civ. P. 17). That notion reflects standing concepts; no such requirement exists in the IPR or PGR context, although an analogous requirement exists in the CBM context. In an IPR or PGR proceeding, there is no “right” being enforced since any entity (other than the patent owner) may file an IPR or PGR petition. However, the spirit of that formulation as to IPR and PGR proceedings means that, at a general level, the “real party-in-interest” is the party that desires review of the patent. Thus, the “real party-in-interest” may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed. In this regard, the Office’s prior application of similar principles in the inter partes reexamination context offers additional guidance. See generally In re Guan et al. Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing Date (Aug. 25, 2008). Similar considerations apply to CBM proceedings, although the statute governing those proceedings also requires that the party seeking the proceeding, or its real party-in-interest or privy, have been sued for infringing the subject patent, or been charged with infringement under that patent.

The notion of “privity” is more expansive, encompassing parties that do not necessarily need to be identified in the petition as a “real party-in-interest.” The Office intends to evaluate what parties constitute “privies” in a manner consistent with the flexible and equitable considerations established under federal caselaw. Ultimately, that analysis seeks to determine whether the relationship between the purported “privy” and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels. This approach is consistent with the legislative history of the AIA, which indicates that Congress included “privies” within the parties subject to the statutory estoppel provisions in an effort to capture “the doctrine’s practical and equitable nature,” in a manner akin to collateral estoppel. In that regard, the legislative history endorsed the expression of “privy” as follows:  

The word “privy” has acquired an expanded meaning. The courts, in the interest of justice and to prevent expensive litigation, are striving to give effect to judgments by extending “privies” beyond the classical description. The emphasis is not on the concept of identity of parties, but on the practical situation. Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case; there is no universally applicable definition of privity. The concept refers to a relationship between the party to be estopped and the unsuccessful party in the prior litigation which is sufficiently close so as to justify application of the doctrine of collateral estoppel. 

154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (citing Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal.App.4th 1506 (Cal. App. 2008)); see also 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (incorporating prior 2008 statement). Subsequent legislative history expanded on the prior discussion of “privy” by noting that “privity is an equitable rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to the property in question.” 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).  

There are multiple factors relevant to the question of whether a non-party may be recognized as a “real party-in-interest” or “privy.” See, e.g., Taylor, 553 U.S. at 893–895 and 893 n.6 (noting that “[t]he list that follows is meant only to provide a framework [for the decision], not to establish a definitive taxonomy”). A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding. See, e.g., id. at 895; see generally WRIGHT & MILLER § 4451. The concept of control generally means that “it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.” WRIGHT & MILLER § 4451. Courts and commentators agree, however, that there is no “bright-line test” for determining the necessary quantity or degree of participation to qualify as a “real party-in-interest” or “privy” based on the control concept. Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). See also WRIGHT & MILLER § 4451 (“The measure of control by a nonparty that justifies preclusion cannot be defined rigidly.”). Accordingly, the rules do not enumerate particular factors regarding a “control” theory of “real party-in-interest” or “privy” under the statute.

Additionally, many of the same considerations that apply in the context of “res judicata” will likely apply in the “real party-in-interest” or “privy” contexts. See Gonzalez, 27 F.3d at 759; see generally WRIGHT & MILLER § 4451. Other considerations may also apply in the unique context of statutory estoppel. See generally, e.g., In re Arviv Reexamination Proceeding, Control No. 95/001,526, Decision Dismissing § 1.182 and § 1.183 Petitions, at 6 (Apr. 18, 2011); In re Beierbach Reexamination Proceeding, Control No. 95/000,407, Decision on § 1.182 and § 1.183 Petitions, at 6 (July 28, 2010); In re Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206, Decision Dismissing Petition, at 5 (June 22, 2010); In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing Date, at 8 (Aug. 25, 2008).

The Office has received requests to state whether particular facts will qualify a party as a “real party-in-interest” or “privy.” Some fact-combinations will generally justify applying the “real party-in-interest” or “privy” label. For example, a party that funds and directs and controls an IPR or PGR petition or proceeding constitutes a “real party-in-interest,” even if that party is not a “privy” of the petitioner. But whether something less than complete funding and control suffices to justify similarly treating the party requires consideration of the pertinent facts. See, e.g., Cal. Physicians, 163 Cal.App.4th at 1523-25 (discussing the role of control in the “privy” analysis, and observing that “preclusion can apply even in the absence of such control”). The Office will handle such questions on a case-by-case basis taking into consideration how courts have viewed the terms. Similarly, while generally a party does not become a “real party-in-interest” or a “privy” of the petitioner merely through association with another party in an unrelated endeavor, slight alterations in the facts, as well as consideration of other facts, might result in a different conclusion. So, for example, if Trade Association X files an IPR petition, Party A does not become a “real party-in-interest” or a “privy” of the Association simply based on its membership in the Association. Similarly, if Party A is part of a Joint Defense Group with Party B in a patent infringement suit, and Party B files a PGR petition, Party A is not a “real party-in-interest” or a “privy” for the purposes of the PGR petition based solely on its participation in that Group. That is not to say that Party A’s membership in Trade Association X, or the Joint Defense Group, in those scenarios is irrelevant to the determination; deeper consideration of the facts in the particular case is necessary to determine whether Party A is a “real party-in-interest” or a “privy” of the petitioner. Relevant factors include: Party A’s relationship with the petitioner; Party A’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. In short, because rarely will one fact, standing alone, be determinative of the inquiry, the Office cannot prejudge the impact of a particular fact on whether a party is a “real party-in-interest” or “privy” of the petitioner.

Under 37 C.F.R. § 42.6(e), service may be made electronically upon agreement of the parties. For example, the parties could agree that electronic filing with the Board of a document constitutes electronic service.

A petitioner may seek entry of the default protective order in Appendix B or may seek entry of an alternative protective order. Where the petitioner seeks entry of the default protective order, the patent owner will be given access to the confidential information prior to institution of the trial by agreeing to the terms of a default order. 37 C.F.R. § 42.55(a). The Board anticipates that a patent owner may use the Board’s electronic filing system to agree to the default protective order and would, upon confirmation of the agreement by the Board, be given access to the provisionally sealed information.

Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by: 
    (1) agreeing to the terms of the protective order requested by the petitioner; 
    (2) agreeing to the terms of a protective order that the parties file jointly; or
    (3) obtaining entry of a protective order (e.g., the default protective order).  

For example, the patent owner could arrange a conference call with the Board and opposing party, and provide a suitable basis for entering the default protective order as opposed to the petitioner’s proposed protective order. 37 C.F.R. § 42.55(b). The Board anticipates that a patent owner may use the Board’s electronic filing system to agree to the protective order requested by the petitioner and would, upon confirmation of the agreement by the Board, be given access to the provisionally sealed information. Similarly, the Board anticipates that a patent owner may use the Board’s electronic filing system to file a protective order that the parties jointly agree to and would, upon confirmation of the agreement by the Board, be given access to the provisionally sealed information. Alternatively, the patent owner would be given access on entry of a protective order by the Board.  

The rule seeks to streamline the process of seeking protective orders prior to the institution of the review while balancing the need to protect confidential information against an opponent’s ability to access information used to challenge the opponent’s claims.

By way of background, an “interests of justice” standard applies in IPR and derivation proceedings (37 C.F.R. § 42.51(b)(2)), whereas the slightly more liberal “good cause” standard applies in PGR and CBM proceedings (37 C.F.R. § 42.224). The more liberal “good cause” standard applies to PGR and CBM proceedings because the scope of these proceedings may be broader than IPRs. They include all of the grounds of IPRs, as well as 35 U.S.C. §§ 101 and 112 (with the exception of failure to disclose the best mode). Also, because a petition for a PGR must be filed no later than nine months after the date of the grant of a patent or of the issuance of a reissue patent (35 U.S.C. § 321(c)), information regarding the patentability of claims subject to PGR review may be more readily available than information regarding the patentability of claims subject to other forms of review that could take place many years after the challenged patent issued, and therefore discovery in a PGR is likely to be obtained from the patent owner in a less burdensome manner. The discussion below centers on additional discovery under the “interests of justice” standard.

In determining when a request for additional discovery will be granted in IPRs under the in the “interests of justice” standard, the Board will be guided primarily by the factors set forth in the Board’s precedential decision in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential). Similar factors for consideration of such requests under the “good cause” standard are set forth in Bloomberg Inc. v. Markets-Alert Pty Ltd., Case CBM2013-00005 (PTAB May 29, 2013) (Paper 32) (precedential). Parties in PGR and CBM proceedings should also refer to that decision for guidance.

In Garmin, the Board set forth a set of five factors considered to be important in authorizing and deciding a motion for additional discovery:

    “1. More Than A Possibility And Mere Allegation—The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence” or reasoning “tending to show beyond speculation that in fact something useful will be uncovered.” Garmin, Case IPR2012-00001, slip op. at 6. See, e.g., Kashiv Pharma LLC v. Purdue Pharma L.P., Case IPR2018-00625 (PTAB July 31, 2018) (Paper 20) (granting patent owners’ motion for additional discovery where patent owners identified several pieces of “threshold” evidence that tended to show that the two requested depositions would shed light on the question of whether an additional party should have been named as a real party-in-interest); Mylan Pharmaceuticals Inc. v. Allergan Inc., Case IPR2016-01127 (PTAB May 31, 2017) (Paper 28) (granting additional discovery of data underlying figures relied on by the patent owner in order for the petitioner to fully develop its rebuttal to patent owner’s evidence of unexpected results). Additionally, “‘useful’ . . . does not mean merely ‘relevant’ and/or ‘admissible,’” but rather “means favorable in substantive value to a contention of the party moving for discovery.” Garmin, Case IPR2012-00001, slip op. at 7. See, e.g., Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00043 (PTAB June 21, 2013) (Paper 27) (finding that laboratory notebooks were per se useful because they contained protocols and procedures used to synthesize and test oligomers and coatings that were relied on by the petitioner’s expert to demonstrate unpatentability of the challenged claims).

    “2. Litigation Positions And Underlying Basis—Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.” Garmin, Case IPR2012-00001, slip op. at 6. Therefore, a party will receive this information in due course. Thus, contention interrogatories would typically not be permitted. See, e.g., St. Jude Med., LLC v. Snyders Heart Valve LLC, Case IPR2018-00105 (PTAB Oct. 18, 2018) (Paper 37) (denying petitioner’s request of expert reports and deposition transcripts from a parallel litigation because petitioner stated that such discovery was sought to probe patent owner’s IPR positions).

    “3. Ability To Generate Equivalent Information By Other Means”—Production by another of “[i]nformation a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice. . . .” Garmin, Case IPR2012-00001, slip op. at 6. See, e.g., Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd., Case IPR2016-00260 (PTAB Nov. 30, 2016) (Paper 39) (denying petitioner’s request for additional documents and deposition partly because petitioner did not show that it could not obtain information about the state of the art and properties of drill cuttings by other means). “In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.” Garmin, Case IPR2012-00001, slip op. at 6.

    “4. Easily Understandable Instructions”—The requests “should be easily understandable.” Garmin, Case IPR2012-00001, slip op. at 6.

    “5. Requests Not Overly Burdensome To Answer—The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and reasonably tailored according to a genuine need” for the discovery. Garmin, A party seeking authorization to file a motion for additional discovery should be prepared to address the Garmin factors and any other pertinent factors during a conference call with the Board to discuss the motion.

Two areas where additional discovery has been sought frequently are identifying real parties-in-interest and secondary evidence of non-obviousness. Narrowly focused requests for additional discovery on these issues may, if appropriate, be permitted. See, e.g., Ventex Co. v. Columbia Sportswear N. Am., Inc., Case IPR2017-00651 (PTAB Dec. 19, 2017) (Paper 40) (granting additional “focused and narrow” discovery regarding production of “relevant testimony concerning secondary consideration of non-obviousness”); but see Palo Alto Networks, Inc. v. Juniper Networks, Inc., Case IPR2013-00369 (PTAB Feb. 5, 2014) (Paper 36) (denying additional discovery relating to copying where patent owner failed to adequately explain how the allegedly copied feature was embodied in the claims for which trial was instituted and finding that the request appeared “not focused, overly broad, and unduly burdensome”); see, e.g., Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488 (PTAB Nov. 5, 2014) (Paper 25) (granting additional discovery of information pertaining to real party-in-interest that was narrowly tailored to communications “regarding the preparation or filing of the Medtronic IPRs”); but see Unified Patents v. Vilox Techs., Case IPR2018-00044 (PTAB Feb. 6, 2019) (Paper 64) (denying request for post-oral argument real party-in-interest discovery where patent owner acknowledged that the discovery would not have any impact on the merits of the final decision and did not assert that any time bar applied).

Where the parties agree to mandatory initial disclosures under 37 C.F.R. § 42.51(a)(1), two options are available as follows:

Under 37 C.F.R. § 42.51(a)(1)(ii), upon institution of a trial, the parties may automatically take discovery of the information identified in the initial disclosures. Accordingly, the initial disclosures of a party shall be filed as exhibits as soon as reasonably practicable to permit discovery related to that information. See 37 C.F.R. § 42.51(a)(1)(i).

Live testimony will be necessary only in limited circumstances and requests for live testimony will be approached by the Board on a case-by-case basis. Factors that may be considered by the Board in determining whether to permit live testimony are set forth in the Board’s precedential decision in K-40 Electronics, Case IPR2013-00203, slip op. at 3. Such factors may include the importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive. Id. Another factor favoring live testimony is if the witness is a fact witness. Id. In contrast, the credibility of experts often turns less on demeanor and more on the plausibility of their theories. See Andreu v. Sec’y of HHS, 569 F.3d 1367, 1379 (Fed. Cir. 2009). See Appendix D for guidance on testimony and Section II.M for additional information on live testimony at an oral hearing.

The rules do not provide for a specific location for taking testimony other than providing that the testimony may be taken at any reasonable location in the United States. The Board expects that the parties will be able to agree upon a reasonable location but will be available to handle the issue, typically via conference call, where the parties are unable to agree.

Typically, authorization for a motion is obtained during an initial conference call, if requested, which generally occurs within one month of the institution of IPR, PGR, CBM, and derivation proceedings. Additionally, where more immediate relief is required or the request arises after the initial conference call, a party should request a conference call to obtain such authorization. Typically, the Board will decide procedural issues raised in a conference call during the call itself or shortly thereafter, thereby avoiding the need for additional briefing. The Board has found that this practice simplifies a proceeding by focusing the issues early, reducing costs and efforts associated with motions that are beyond the scope of the proceeding. By taking an active role in the proceeding, the Board can eliminate delay in the proceeding and ensure that attorneys are prepared to resolve the relevant disputed issues.

37 C.F.R. § 42.24(d) requires that any paper whose length is specified by type-volume limits must include a certification stating the number of words in the paper. In making such a certification, a party may rely on the word count of the word-processing system used to prepare the paper. Page and word count limits do not include table of contents, a table of authorities, mandatory notices under 37 C.F.R. § 42.8, a certificate of service, or appendix of exhibits or claim listing; but this exemption from word count limits does not apply to grounds for standing. See 37 C.F.R. § 42.24(a)(1); 81 Fed. Reg. 24,702–03 (April 27, 2016). A party is not required to submit a statement of material facts in its briefing.  37 C.F.R. § 42.22. Further, double spacing is not required for claim charts. 37 C.F.R. § 42.6(a)(2)(iii).

Federal courts routinely use word count limits to manage motions practice, as “[e]ffective writing is concise writing.” Spaziano v. Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Federal courts have found that word count limits ease the burden on both the parties and the courts, and patent cases are no exception. Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 910 (Fed. Cir. 2014) (explaining that allowing a party to incorporate by reference, resulting in exceeding court’s allowable word count would be fundamentally unfair).

Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented, and can otherwise cause meritorious issues to be missed or discounted. Thus, parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy to follow arguments supported by readily identifiable evidence of record. Another factor to keep in mind is that judges of the Board are familiar with the general legal principles involved in issues which come before the Board. Accordingly, unless there is a dispute over the applicable law, extended discussions of general patent law principles may not be necessary.

The Office provides the following practical guidance regarding compliance with the word count limits.  With a word count limit, parties may include concise arguments in claim charts if they choose. Moreover, when certifying word count, a party need not go beyond the routine word count supplied by their word processing program. Parties should not abuse the process. Excessive words in figures, drawings, or images, deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered. See, e.g., Pi Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015). Except in cases of obvious abuse, the Board will generally accept a party’s certification of compliance with word count limits. If a party feels that it would suffer undue prejudice from an opposing party’s alleged word count limit violation or abuse, that party should raise the issue with the Board promptly after discovering the issue. The Board expects the parties to take reasonable steps to remedy any such issues before approaching the Board. If an opposing party raises a word count limit violation or abuse, the Board will consider such a violation or abuse on a case-by-case basis.

The following claim drafting techniques would not typically render a patent a technological invention:
  (a) Mere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device.
  (b) Reciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious.
  (c) Combining prior art structures to achieve the normal, expected, or predictable result of that combination.

The following are examples of covered business method patents that are subject to a CBM review proceeding:
  (a) A patent that claims a method for hedging risk in the field of commodities trading.  
  (b) A patent that claims a method for verifying validity of a credit card transaction.  

The following are examples of patents that claim a technological invention that would not be subject to a CBM review proceeding:
  (a) A patent that claims a novel and non-obvious hedging machine for hedging risk in the field of commodities trading. 
  (b) A patent that claims a novel and non-obvious credit card reader for verifying the validity of a credit card transaction.  

Where claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). A party may choose to elaborate why § 112(f) should or should not apply to the limitation at issue. See Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). A petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).

The Office has revised the claim construction standard used in IPR, PGR, and CBM proceedings, and now applies the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (Final Rule) (applying to all IPR, PGR and CBM petitions filed on or after November 13, 2018). This is the same claim construction standard used by Article III federal courts and the ITC, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny. The amended rules (37 C.F.R. §§ 42.100(b), 42.200(b), and 42.300(b)) reflect that in an AIA proceeding, the Board will apply the same standard used in federal courts to construe patent claims. The Board will construe patent claims and proposed substitute claims based on the record of the IPR, PGR, or CBM proceeding, taking into account the claim language itself, specification, and prosecution history pertaining to the patent, as well as relevant extrinsic evidence, all as in prevailing jurisprudence of Article III courts. The Board will also take into account the prosecution history that occurred previously in proceedings at the Office prior to the IPR, PGR, or CBM proceeding at issue, including in another AIA proceeding, or before an examiner during examination, reissue, and reexamination.

The Board will determine the claim construction based on the record of the proceeding at issue. Thus, as in a district court proceeding, the parties should point out the specific portions of the specification, prosecution history, and relevant extrinsic evidence they want considered, and explain the relevancy of any such evidence to the arguments they advance. Each party bears the burden of providing sufficient support for any construction advanced by that party.

The claim construction rule also provides that “[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the . . . proceeding will be considered.” 37 C.F.R. §§ 42.100(b), 42.200(b), 42.300(b). Under this provision, the Board will consider any prior claim construction determination in a civil action or ITC proceeding if a federal court or the ITC has previously construed a term of the involved claim using the same standard, and the claim construction determination has been timely made of record in the IPR, PGR, or CBM proceeding. The Board will give such other claim construction determinations appropriate weight. Non-exclusive factors considered by the Board when determining appropriate weight may include, for example, the similarities between the record in the district court or the ITC and the record before the Board. It may also be relevant whether the prior claim construction is final or interlocutory. These factors will continue to be relevant under the district court claim construction standard, which is articulated in Phillips. The Board may also consider whether the terms construed by the district court or ITC are necessary to deciding the issues before it. This is not an exclusive list of considerations, and the facts and circumstances of each case will be analyzed as appropriate.

Parties should submit a prior claim construction determination by a federal court or the ITC in an AIA proceeding as soon as that determination becomes available. Preferably, the prior claim construction determination should be submitted with the petition, preliminary response, or response, along with explanations. Submission of a prior claim construction determination is mandatory under 37 C.F.R. § 42.51(b), if it is “relevant information that is inconsistent with a position advanced by the party during the proceeding.” In such cases, the determination should be submitted “concurrent with the filing of the documents or things that contains the inconsistency.” 37 C.F.R. § 42.51(b). After a trial is instituted, the Board’s rules on supplemental information govern the timing and procedures for submitting claim construction decisions. 37 C.F.R. §§ 42.123, 42.223. Under those rules, a party must first request authorization from the Board to file a motion to submit supplemental information. If it is more than one month after the date the trial is instituted, the motion must show why the supplemental information reasonably could not have been obtained earlier. Normally, the Board will permit such information to be filed, as long as the final oral hearing has not taken place. The Board may permit a later filing where it is not close to the one-year deadline for completing the trial. Again, parties should submit a prior claim construction as soon as the decision is available.

The Board, in its claim construction determinations, will consider statements regarding claim construction made by patent owners and by a petitioner filed in other proceedings, if the statements are timely made of record. Cf. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360–61 (Fed. Cir. 2017) (extending the prosecution disclaimer doctrine to include patent owner’s statements made in a preliminary response that was submitted in a prior AIA proceeding). To the extent that a party wants such information to be considered by the Board, that party should point out specifically the statements and explain how those statements support or contradict a party’s proposed claim construction in the proceeding at issue. Each party bears the burden of providing sufficient support for any construction advanced by that party. Furthermore, the Board may take into consideration statements made by a patent owner or petitioner about claim scope, such as those submitted under 35 U.S.C. § 301(a), for example.

The petitioner and patent owner have opportunities, during the preliminary stage, to submit their proposed claim constructions (in a petition and preliminary response, respectively) and any supporting evidence, including both intrinsic and extrinsic evidence. Upon consideration of the parties’ proposed claim constructions and supporting evidence, the Board will provide an initial claim construction determination in the institution decision, to the extent that such construction is required to resolve the disputes raised by the parties. If a trial is instituted, the parties also will have opportunities to cross examine any opposing declarants, and to submit additional arguments and evidence, addressing the Board’s initial claim construction determination and the opposing party’s arguments and evidence before oral hearing. The Board also will consider the entirety of the trial record, including the claim language itself, the specification, prosecution history pertaining to the patent, extrinsic evidence as necessary, and any prior claim construction determinations from the federal courts and ITC that have timely been made of record, before entering a final written decision that sets forth the final claim construction determination. All parties will have a full and fair opportunity to present arguments and evidence prior to any final determination.

Where no trial is instituted, a decision to that effect will be provided. The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases. A party dissatisfied with a decision whether or not to institute may file a request for rehearing before the Board, but the Board’s determination on whether to institute a trial is final and nonappealable. 35 U.S.C. §§ 135(a), 314(d), § 324(e); 37 C.F.R. §§ 42.71(c), (d).

Amendments should clearly state where the specification and any drawings support all the limitations in the proposed substitute claims. If the Board is unable to determine how the specification and drawings support the proposed substitute claims, the motion to amend may be denied.

Motions to amend must respond to a ground of unpatentability involved in the trial. 37 C.F.R. § 42.121(a)(2)(i). The rule does not require, however, that every word added to or removed from a claim in a motion to amend be solely for the purpose of overcoming an instituted ground. Additional modifications that address potential 35 U.S.C. § 101 or § 112 issues, for example, are not precluded by rule or statute. Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, -01130, slip op. at 5–6 (PTAB Feb. 25, 2019) (Paper 15) (precedential).

Motions to amend should clearly state the patentably distinct features for proposed substitute claims. This will aid the Board in determining whether the amendment enlarges the claims and if the amendment is responsive to the grounds of unpatentability involved in the trial. “Under 37 C.F.R. § 42.11, all parties have a duty of candor, which includes a patent owner’s duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case.” Id. at 9–10.

The number of substitute claims must be “reasonable.” There is a presumption that only one substitute claim would be needed to replace each challenged claim. 37 C.F.R. §§ 42.121(a), 42.221(a). This presumption may be rebutted by a demonstration of need.

Factors that the Board may consider in deciding a motion for joinder include why joinder is appropriate, whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).

The Board has discretion under 35 U.S.C. § 315(c) to join a petitioner to a proceeding in which it is already a party and to allow joinder of new issues into an existing proceeding. Proppant Express Invs. v. Oren Techs., Case IPR2018-00914, slip op. at 3–4 (PTAB Mar. 13, 2019) (Paper 38) (precedential). Furthermore, the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising discretion under 35 U.S.C. § 315(c). Proppant, Case IPR2018-00914, slip op. at 4. Thus, when an otherwise time-barred petitioner requests same party and/or issue joinder, the Board may exercise its discretion to permit joinder, but will do so only where fairness requires it and to avoid undue prejudice to a party. Id. at 19. The Board expects to exercise its discretion to permit such joinder only in extremely limited circumstances. Id. Circumstances leading to this narrow exercise of discretion to permit such joinder may include, for example, certain actions taken by a patent owner in a co-pending litigation such as certain late additions of newly asserted claims. Id. The Board does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petitioner. Id. The conduct of the parties and attempts to game the system may also be considered. Id. In this way, the Board can carefully balance the interest in preventing harassment against fairness and prejudice concerns on a case-by-case basis, based on the facts then before it. Id.

Other factors may also be important when considering whether to grant joinder to an otherwise time-barred petitioner requesting same party and/or issue joinder. For example, the stage and schedule of an existing inter partes review might make joinder to that proceeding inappropriate. Id. Also, consideration of the non-exclusive factors set out in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper 19) (precedential as to § II.B.4.i), may support the exercise of the Board’s discretion to deny institution under 35 U.S.C. § 314(a). Proppant, Case IPR2018-00914, slip op. at 19. Events in other proceedings related to the patent at issue may also weigh on the Board’s discretion in a given case. Id.

In proceedings in which one or more parties are joined, the Board is permitted to adjust the one-year statutory deadline for issuing a final written decision. See 35 U.S.C. §§ 316(a)(11), 326(a)(11) (“[T]he final determination in [an inter partes or post-grant] review [shall] be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director . . . may adjust the time periods in this paragraph in the case of joinder”); see also 37 C.F.R. §§ 42.100(c), 42.200(c), 42.300(c) (An IPR, PGR, or CBM “proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be . . . adjusted by the Board in the case of joinder.”).

Notwithstanding joinder, the Board will endeavor to issue a final written decision within one year from the date a trial is instituted. In cases where the joined party adds additional claims, grounds, evidence, or arguments that complicate the proceeding, however, it is more likely that the Board will adjust the deadline for issuing a final written decision. If possible, such adjustments will not exceed an additional six months. In the case of joinder, if the Board determines that it will adjust the deadline for issuing a final written decision, the Board will specify the new deadline in an order issued prior to the expiration of the one-year statutory time period in the case to which the current petitioner is joined. See, e.g., Apple, Inc. v. Evolved Wireless LLC, Case IPR2016-00758 (PTAB Oct. 12, 2017) (Paper 44).

Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot. Nevertheless, in certain circumstances, the evidence may be so central to the parties’ dispute that mootness is unlikely and early resolution of the motion to exclude may be warranted. In such cases, a party may request a pre-hearing conference with the panel to seek early resolution of a motion to exclude on a limited number of objections. The Board will preferably rule on such a motion during the pre-hearing conference (or after the pre-hearing conference but before the oral hearing), but may also defer ruling until the oral hearing or thereafter.

A motion to strike may be appropriate when a party believes the Board should disregard arguments or late-filed evidence in its entirety, whereas further briefing may be more appropriate when the party wishes to address the proper weight the Board should give to the arguments or evidence. In most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply. As such, striking the entirety or a portion of a party’s brief is an exceptional remedy that the Board expects will be granted rarely. In some cases, however, whether an issue is new or evidence is belatedly presented may be beyond dispute, or the prejudice to a party of waiting until the close of the evidence to determine whether new issues or belatedly presented evidence has been presented may be so great, that the facts may merit considering a motion to strike. For example, where a reply clearly relies on a new theory not included in prior briefing, and where addressing this new theory during oral hearing would prejudice the opposing party, striking the portion of the brief containing that theory may be appropriate. When authorized, the Board expects that it will decide a motion to strike as soon as practicable, and preferably before oral hearing, so that the parties need not devote time during the hearing to addressing improper arguments.

Generally, authorization to file a motion to strike should be requested within one week of the allegedly improper submission. The Board will consider such requests on a case-by-case basis.

To facilitate the Board’s timely issuance of decisions on remand, parties in remanded trial cases are to contact the Board within ten business days after the mandate issues to arrange a conference call with the panel. Before the conference call, the parties shall meet and confer in a reasonable and good faith attempt to propose a procedure on remand. Parties are encouraged to seek agreement, if possible, on remand procedures including, but not limited to:  (1) whether additional briefing is necessary; (2) subject matter limitations on briefing; (3) length of briefing; (4) whether the parties should file briefs concurrently or sequentially; (5) if briefs are filed sequentially, which party should open the briefing; (6) whether a second brief from either party should be permitted; (7) the briefing schedule; (8) whether either party should be permitted to supplement the evidentiary record; (9) limitations, if any, on the type of additional evidence that will be submitted; (10) the schedule for submitting additional evidence, if any; and (11) any other relevant procedural issues. Conference calls with the Board should take place within the first month after the mandate issues.

The Board will consider the parties’ proposals and decide the procedures to be followed. For example, the Board will decide whether to permit additional briefing and additional evidence (testimonial and documentary) or hold additional hearings following a remand, taking into account, among other considerations, the scope of the remand, as determined from the reasoning and instructions provided by the Federal Circuit, and the “effect . . . on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” 35 U.S.C. §§ 316(b), 326(b).

In deciding whether to permit additional briefing and the introduction of additional evidence, the Board may take into account whether the parties already have had an adequate opportunity to address the issues raised by the remand with the briefing and evidence already of record. Additional briefing, when permitted, will normally be limited to the specific issues raised by the remand. See Microsoft Corp. v. Proxyconn, Inc., Case IPR2012-00026 (PTAB Sept. 1, 2015) (Paper 77); see also Dell Inc., v. Acceleron, LLC, Case IPR2013-00440 (PTAB May 26, 2016) (Paper 46). Moreover, unless the Federal Circuit’s opinion directs the Board to reopen the evidentiary record, a party seeking to re-open the evidentiary record will be expected to demonstrate why the evidence already before the Board is inadequate and to show good cause why additional evidence is necessary. The Board may also consider whether any authorized additional briefing would be sufficient without the submission of additional evidence, as well as how much additional time would be necessary to develop a new evidentiary record. In most cases, an additional oral hearing will not be authorized, as the existing record and previous oral argument normally will be sufficient. However, in those situations where new evidence is permitted, the Board may authorize additional oral argument.

Although no statutory time limit exists for completion of a re-opened proceeding following remand, the Board recognizes that delays caused by re-opening the record after remand may be inconsistent with the Board’s stated goal of issuing a remand decision within six months from the mandate. Accordingly, the Board also will consider the time and expense that permitting additional briefing and new evidence will add to the proceeding, consistent with the expression of Board policy in 37 C.F.R. § 42.1(b): “This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”

Absent good cause, proceedings on remand generally will not be stayed once the Federal Circuit has issued its mandate, even when a party has petitioned the Supreme Court for a writ of certiorari. A party may contact the Board to request authorization to file a motion for a stay of proceedings on remand. The Board will consider such requests on a case‑by-case basis. The Board may require briefing on a motion to stay the remand proceedings, or, for convenience, the issue may be discussed and decided in a conference call. In deciding whether to stay remanded proceedings, the Board may consider, among other things, whether the Supreme Court’s judgment would impact the Board’s decision on remand. See, e.g., SAS Inst., Inc. v. ComplementSoft, LLC, Case IPR2013-00226 (PTAB Feb. 8, 2017) (Paper 57) (denying request to stay because the issue on remand was separable from, and not influenced by, the question presented in the certiorari petition). The Board’s decision not to stay remanded proceedings does not affect the right of a party to petition the Supreme Court for a writ of certiorari.