Patent Post-Grant Proceedings Continue Despite Covid-19 Disruptions

Wilson Sonsini Goodrich & Rosati

Wilson Sonsini Goodrich & Rosati

The Patent Trial and Appeal Board (PTAB) and the United States Court of Appeals for the Federal Circuit (CAFC) have made adjustments in their practices to accommodate the new realities of COVID-19 and social distancing, but remain open for business. In general, parties before either body should continue to meet set deadlines, except as detailed below. The United States Patent and Trademark Office (USPTO) has stressed that it cannot waive statutory deadlines. Although appeals have fewer statutory deadlines, the deadline for filing an appeal is one of them. Additionally, parties should assess whether additional measures—some outlined below—might be prudent to avoid potential pitfalls.

Adjustments at the PTAB

  • The USPTO has closed its physical offices to the public, including PTAB hearing rooms, until further notice but is otherwise continuing its operations.
  • The PTAB will provide parties with notice in each affected case regarding options for video or telephonic hearings.

Early examples of hearing orders1 offer the parties the option of a video hearing or a telephone hearing. If a video hearing proves impractical, a telephonic hearing will occur as a backup. In either case, the PTAB plans to retain control of the medium and provide the connection information to the parties; however, the parties must provide the equipment and facilities to participate on their end. Parties are required to contact the PTAB hearing coordinators a week in advance to ensure that their arrangements will work. The orders note that bandwidth may present a problem and provide suggestions for accommodating for such technological shortcomings, such as identifying the speaker and increasing pauses between speakers.

The PTAB appears to still be working its way through staffing and technical issues. The PTAB may be grappling with issues like bandwidth limitations and providing public and disabled access to hearings. Significantly, the PTAB appears to have stopped posting hearing schedules for the public. The PTAB has not indicated how many video participants it can accommodate, but parties should be realistic about the number of attendees.

No video hearings appear to have been posted yet,2 and it is not clear whether the PTAB will post the video or just the transcript. The file size of a video hearing might exceed effective operational capacity of the PTAB's electronic filing system.

Arguments in appeals from examinations will likely be telephonic only.

Thus far the PTAB has not needed to exercise its ability to extend cases solely due to COVID-19 related issues. We have seen evidence that the PTAB is more liberally employing other extension mechanisms, such as extensions in joinder cases.

The USPTO has separately announced other adjustments to non-PTAB requirements.

Adjustments for Parties at the PTAB

  • While much of the work parties do during the course of a PTAB trial can occur remotely, depositions pose a particular challenge.
    • Most reporter services provide telephonic and even web-video deposition services, but these mediums require adjustments by both examining and defending counsel.
    • Time lags and limited visibility with the witness may present difficulties in making objections and preventing coaching.
    • Witness-created or witness-marked exhibits present added challenges.
  • Travel for client, co-counsel, and witness meetings is restricted.
  • When actual papers are served (typically just the petition and accompanying exhibits), parties should consider providing courtesy copies by email when possible to reduce COVID-19 related excuses, such as delay in receiving service.3

Adjustments at the CAFC

  • The CAFC, which historically has been generous in granting oral argument, will be more selective in the cases it hears and will decide more cases solely on the briefs.
  • All arguments scheduled for April will be conducted by telephone; no in-person hearings will be held. The parties in scheduled cases will receive updated notices in their cases.
  • Initial filing and service by counsel is already electronic, but new procedures have been adopted for pro se filers.
  • Filing of paper copies (now required once briefing has been completed) is suspended until further notice unless the initial filing can only be made in paper.
  • Call volume has forced the CAFC to curtail telephone assistance from the Clerk's Office; questions should be directed to one of two email addresses for case-specific and general questions, respectively.
  • The CAFC canceled its 2020 Judicial Conference, but hopes to be able to reschedule it.

The CAFC will continue to record arguments and will continue to post the recordings on the same day the hearing occurs. As with the PTAB, the CAFC is not changing schedules in pending cases solely due to operational restrictions or extending times for parties solely due to COVID-19 related difficulties.4

[1] Aligent Technologies Inc. v. Bio-Rad Laboratories Inc., IPR2019-00271, Paper 20; Alphatec Holdings, Inc. v. NuVasive, Inc., IPR2019-00361, Paper 46.

[2] See, e.g., Aligent, IPR2019-00271, docket (showing no video posted for the March 18, 2020, hearing as of March 25).

[3] The time for the patent owner to file a preliminary response is not statutory so the PTAB could push it later in response to a service problem.

[4] See, e.g., Mantissa Corp. v. Ondot Systems, Inc., App. No. 17-2533 (Fed. Cir. Mar. 20, 2020) (denying unopposed motion to extend to time due to COVID-19 issues).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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