Key Takeaways from the First Updates to the AIA Trial Practice Guide
Monica GrewalDavid CavanaughNatalie R. Pous
On August 13, the Patent Trials and Appeal Board (PTAB or Board) published updates to the AIA Trial Practice Guide (the TPG Update). The TPG Update is a supplement to the original Trial Practice Guide (TPG), which the PTAB first published in 2012 along with the promulgation of Trial Rules for AIA proceedings. The TPG is “intended to encourage consistency of procedures among panels of the PTAB.” TPG Update at 2. The TPG Update provides additional guidance on several aspects of trial practice before the PTAB, based on its almost six years of experience with AIA trial proceedings. Id. Rather than update the entire TPG at once, to expedite disseminating information to the public, the PTAB expects to publish updates like the TPG Update on different sections of the TPG on a periodic basis. Id.
This article summarizes key takeaways from the TPG Update, including: the use of expert testimony; consideration of various non-exclusive factors in the determination of whether to institute a trial; providing for sur-replies to principal briefs as a matter of right; the distinction between motions to exclude and motions to strike, and the proper use of each; procedures for oral hearing before the Board, including the use of live testimony, sur-rebuttal, and default time for the hearing; and providing for a pre-hearing conference and potential early resolution of issues.
Volume 49, Issue 4