New AIA trial practice rules curtail multiple patent challenges, say lawyers
The US Patent and Trademark Office ( USPTO) has published an update to its American Invents Act (AIA) Trial Practice guide.
The revised guidelines, published on Monday July 15, details changes to the claim construction standard and the filing of serial, similarly-timed petitions challenging the same patent.
The USPTO said the update is “not all-encompassing, and there may be further revisions” as it continues to review AIA trial proceedings.
Under its revised guidelines, the Patent Trial and Appeal Board (PTAB) said that based on its prior experience, it has found that one petition should be sufficient to challenge the claims of a patent in most situations.
It said two or more petitions filed at a similar time, against the same patent, may place a “substantial and unnecessary burden” on PTAB and the patent owner. Additionally, it said this could raise fairness, timing, and efficiency concerns.
“This has long been a practice of defendants in district court litigation, and the USPTO seems to be curtailing that option,” said Ashley Moore, a principal at McKool Smith.
But, the board said it recognises there may be circumstances in which more than one petition may be necessary.
“Even then, the USPTO states that the need for two or more petitions should be the exception, not the rule. This seems to be a signal that the USPTO will apply enhanced scrutiny to these types of serial petitions,” Moore added.
The new guidelines state that in order to determine whether more than one petition is necessary, the petitioner should identify a ranking of the petitions in the order in which it wishes the Board to consider them, and a “succinct explanation” of the differences between the petitions.
Additionally, the USPTO said it had revised the claim construction standard used in inter partes review, post-grant review and covered business method patent review proceedings.
It said it will now apply the same claim construction standard to assess the claim that is used in district courts, federal courts and by the International Trade Commission (ITC).
It said it will assess the claim language itself, specification, prosecution history pertaining to the patent as well as relevant extrinsic evidence.
“The updated guidance also makes clear that the USPTO will consider prior claim construction decisions from district courts and the ITC so long as they are submitted in a timely manner,” Moore said.
“This is particularly important—and actually mandatory—if a party takes inconsistent positions in the IPR and district court cases. The USPTO’s guidance on this point should promote efficiency and consistency in the claim construction process,” she added.
The revisions come less than a year after the office revised its guidelines in August 2018.
While PTAB previously waited until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude, under the August 2018 revisions, it said that either party to the case could now request a pre-hearing conference to seek early resolution of the motion to exclude.
While the guidance states that a motion to strike should be granted only on rare occasions, the authorisation to file the motion should be requested within one week of the allegedly improper submission.
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