Introduction
In a recent
article, we discussed several aspects of a July 2019
Update that the Patent Trial and Appeal Board (PTAB) issued to
the PTAB Trial Practice Guide.1 This article continues that
discussion, addressing institution decisions on multiple petitions,
and motions to amend.
1. Multiple petitions challenging the same patent
The July 2019 Update discusses the preferred practice based on
the PTAB's experience when there are multiple petitions filed
at or about the same time, challenging the same patent. While
recognizing that there are circumstances warranting more than one
petition challenging patent claims, the Update states:
Based on the Board's prior experience, 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
