PTAB Trial Practice

• Author: Erika Harmon Arner - Kathleen A. Daley - Michael J. Flibbert
• Pages: 29-93

This chapter provides a synthesis of the statutes and rules, augmented with

guidance from representative and informative decisions, supplemented

with exemplary rulings, and including questions/responses and Patent and

Trademark Ofce (PTO) comments to provide a single place to look for

everything about each topic.

A. Conduct of the Proceedings

1. Timeline

The general framework and certain deadlines including the timing for the

Board to issue an institution decision1,2 and issue a nal written decision3

for inter partes review (IPR), post-grant review (PGR), and covered busi-

ness method patents (CBM) trials are set by statute. All other deadlines

and timing are set by the Board.

4,5

Before institution, the due date for the

1. 35 U.S.C. §§ 314(b), 324(b).

2. All citations to Title 35 of the United States Code are to the 2006 edition, Supplement

5 (2011), in effect as of January 3, 2012, as amended by the Leahy-Smith America Invents

Act, Pub. L. No. 112-29 (2011) and the AIA Technical Corrections Act, Pub. L. No. 112-274

(2013), unless noted otherwise.

3. 35 U.S.C. §§ 316(a)(11), 326(a)(11).

4. 37 C.F.R. § 42.5(c)(1).

5. All citations to Title 37 of the Code of Federal Regulations refer to rules in effect as

of June 19, 2016, unless noted otherwise.

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Chapter 3

PTAB Trial Practice

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patent owner preliminary response is typically three months from a notice

indicating that the petition was granted a ling date.

6

After institution, the

timeline for a trial varies and is determined by a scheduling order entered

concurrently with the Board’s decision to institute trial.7 The Ofce has,

however, provided a representative timeline for trials.8 The following

timeline is based on the Ofce’s representative timeline.

Chapter 5, section B, provides citations to sample scheduling orders.

Notably, the scheduling order for a trial may be modied. Indeed, “parties

are encouraged to recommend particular dates within the general framework

of the scheduling order that work for both, before the initial conference

call.”9 However, the oral hearing date, specied in the scheduling order is

usually very difcult to change.

2. Logistics

a. Filing Documents

Unless otherwise authorized, all submissions to the Board in IPR, CBM,

and PGR proceedings must be made electronically via the Patent Trial

and Appeal Board End to End (PTAB E2E) system available at https://

ptabtrials.uspto.gov.

10

The Ofce’s website contains detailed information

regarding logging on to the system and obtaining a user ID and pass-

word. Only pdf and mpeg format les may be uploaded into the PTAB

E2E system, and le sizes cannot exceed 25 megabytes.

In the event that PTAB E2E is unavailable, documents may be emailed to

the Board at Trials@uspto.gov. Documents submitted via email must include

a motion requesting acceptance of the submission.11 Other means of ling,

such as paper ling, are only authorized if both PTAB E2E and the Board’s

email address are down. “A late action will be excused only by a showing

6. 37 C.F.R. §§ 42.107(b), 42.207(b).

7. 77 Fed. Reg. 48680, 48705–-07, Responses to Comments 76, 85 (Aug. 14, 2012).

8. Ofce Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48757 (Aug. 14, 2012).

9. 77 Fed. Reg. 48680, 48708, Response to Comment 97 (Aug. 14, 2012).

10. 37 C.F.R. §42.6(b)(1) (2012).

11. 37 C.F.R. § 42.6(b)(2).

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of good cause or upon the Board’s decision that considering the merits of

the action would be in the interests of justice.”12 The Board has held that

there is no “good cause” for excusing a late ling if the party only started

to le papers minutes before a deadline.13

b. Exhibits

All evidence must be led in the form of an exhibit (afdavits, transcripts,

documents, and things).

14

Each exhibit must be rst led with the docu-

ment that cites to it.15 If a document is already of record in the proceeding,

it should not be led again without Board authorization.16 If a document is

in a language other than English a translation and an afdavit attesting to

the accuracy of the translation must accompany the document.17 Exhibits

12. 37 C.F.R. §42.5(c)(3).

13. Pac. Mkt. Int’l., LLC v. Ignite USA, LLC, IPR2014-00561, Paper 40 at 4 (May 12, 2015).

14. 37 C.F.R. §42.63(a).

15. Id. §42.6(c).

16. Id. §42.6(d).

17. Id. §42.63(b).

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PTAB TRIAL PRACTICE

Time line of PTAB trials

Figure 3-1

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