Practice at the Patent Trial and Appeal Board During a Pandemic

The business of the Patent Trial and Appeal Board (PTAB) continues on as most practitioners transition into another month of working from home. Like many courts, the PTAB has adapted its standard practices. For example, the PTAB has transitioned to remote hearings and encouraged remote depositions, but has otherwise continued to advocate for business as usual. The PTAB also appears to be accommodating requested scheduling changes. This article addresses the main highlights from recent PTAB actions to provide practitioners with additional resources as they navigate PTAB practice over the next weeks and/or months.

Pre-Institution

A proceeding before the PTAB is initiated with the filing of a petition. There is no change to this practice or the statutory deadlines associated with filing a petition. See 35 U.S.C. § 315. Service of the petition is also required and, in most cases, service has historically been accomplished by mail. However, petitioners are invoking a rarely used rule that allows for electronic service of a petition upon agreement by the parties. 37 C.F.R. § 42.105(b) (“Upon agreement of the parties, service may be made electronically. Service may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. Personal service is not required.”). Relying on this provision allows for compliance with the stay-at-home orders and eliminates the costly practice of printing and mailing copies of the petition and exhibits.

In response to a petition, patent owners are entitled to file a preliminary response. A preliminary response, if filed, “must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date.” 37 CFR § 42.107. In the current environment, patent owners are entitled to an extension to the preliminary response deadline. Specifically, the PTAB “shall provide a 30-day extension of time” for a patent owner preliminary response in a trial proceeding under 37 C.F.R. § 42.107 upon “affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak.” Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act. Patent owners appear to be taking advantage of this extension.

Given the PTAB’s heightened interest in the timing of inter partes review (IPR) proceedings and co-pending district court cases, the PTAB is seeing increased pre-institution briefing regarding its discretion to deny institution. For example, the PTAB in NHK Spring Co. v. Intri-Plex Technologies, Inc., denied institution under 35 U.S.C. § 325(d) and found that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition under § 314(a).” Petitioners are relying on the unpredictability caused by the pandemic to argue that delays in jury trials are expected and that prudence counsels instituting the IPR and proceeding with the efficient IPR process. Petitioners should, however, exercise caution because the PTAB has set limits to additional briefing, especially if NHK Spring is not addressed in the petition.

Trial Schedule

Once instituted, the PTAB issues a scheduling order. Many key dates in the scheduling order are already adjustable by stipulation. That said, the PTAB has involved itself in scheduling changes and has proven to be accommodating. For example, the PTAB has allowed for two-month delays in the schedule to accommodate depositions, allowed for a delay of the oral hearing for up to a month, and other intermediate changes to particular due dates (e.g., deadlines on remand). The PTAB has likewise extended deadlines set by rule such as the deadline to serve supplemental evidence. Even though the PTAB has been accommodating, it has signaled that it will take a more cautious approach to cases where a patent owner may file a motion to amend given the already compressed trial schedule.

Oral Hearing

Starting as early as March 13, 2020, the PTAB moved all PTAB oral hearings to video or phone (upon request). In most orders, the PTAB indicates that lead counsel for each party is to be present by video and notes that any counsel of record may present the party’s argument so long as that counsel is also present by video. Initial reports from practitioners indicate that remote hearings have been relatively seamless. That said, these initial reports do indicate that practitioners should be ready for predicable challenges related to bandwidth and other software-related issues. For example, bandwidth constraints have limited each party, in some cases, to a single representative on video (all other participants are able to join via phone). Other glitches have caused the hearing to be delayed while connections are restored. Practitioners should also be aware that they will not be able to share their screen and will instead need to reference demonstratives by page number.

While there is much talk about reopening, the nature of PTAB practice as well as the potential for ongoing precautions at the USPTO suggest that PTAB practice will remain in flux for the upcoming months. This uncertainty will likely lead to additional disruptions and delays as cases progress to completion. If nothing else, current PTAB practice suggests contacting the PTAB early and often to allow for the most flexibility.

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Author: iqoncept
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