New PTAB Guide Creates Uncertainty As To Multiple Petition Situations

The USPTO published its second update to the PTAB Trial and Practice Guide last month. The section addressing procedures for addressing multiple challenges to a patent is a new and noteworthy addition.

In the new section addressing "parallel petitions challenging the same patent" by the same petitioner, the Board states that, "one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns."

The Guide notes that "there may be circumstances in which more than one petition may be necessary" and provides examples of when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date. The new procedure requires that, when a petitioner files more than one petition challenging the same patent, the petitioner should rank the petitions and explain in its petition or in a separate filing the differences between the petitions, why the differences are material, and why the Board...