On Friday, April 1, 2016, the Patent and Trademark Office issued the second amendment to the rules for trial practice before the Patent Trial and Appeal Board. 81 Fed. Reg. 18750 (Apr. 1, 2016). The amendments to the PTAB’s rules of practice give patent owners more options when opposing the institution of a proceeding and the potential to have expiring claims reviewed under a narrower claim construction standard. In addition, the rules alter certain requirements for filing and modify deadlines for filing exhibits before oral argument. The new rules apply to petitions filed on or after May 2, 2016 as well as to any ongoing proceeding or trial.
First, patent owners will now have the option to introduce testimonial evidence, including expert declarations, with their preliminary response in post-grant proceedings. Patent owners previously had no opportunity to effectively rebut testimony presented by a petitioner’s experts until after institution of the proceeding; this amendment gives the patent owner a potent method to prevent institution altogether. However, the new rule also states that “any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of deciding whether to institute an inter partes review.” (See, e.g., revised 37 C.F.R. § 42.108.) Thus, patent owners should assess the value of submitting early testimonial evidence in view of this standard and the short (3 month) time frame in which they must respond to the petition.
Second, the amendments allow parties to request that claim terms be construed under the narrower Phillips standard—as opposed to the “broadest reasonable interpretation” standard—if the patent is set to expire within 18 months from the entry of the Notice of Filing Date Accorded to the Petition. (See, e.g., revised 37 C.F.R. § 42.200.) Because the broadest reasonable interpretation standard may act to increase the scope of what is considered pertinent prior art, such a request could be beneficial to patent owners. The request must be accompanied by a motion and a party’s certification, and must be made within 30 days from the filing of the petition. (See id.) The panel will consider whether the motion is appropriate and whether additional briefing is necessary for each party to adequately address the appropriate construction standard.
Third, the amendments replace certain current page limit requirements with a requirement for a word count limit. For example, petitions for institution of inter partes review and preliminary responses no longer are limited to 60 pages, but are limited to 14,000 words and require a certification of word count. (See, e.g., revised 37 C.F.R. §§ 42.24(a)(1), (d).) This change prevents formatting manipulations, but also assists parties who intend to rely on illustrations within their briefing. The word counts exclude the table of contents, table of authorities, grounds for standing, mandatory notices, certificates of service or word count, or appendices of exhibits. The amendments do not alter the set page limits for traditional motions or motions to amend. (See id.)
Finally, the new rules will require a Rule 11-type certification for papers filed in a proceeding. Papers presented to the PTAB must comply with the signature and certification requirements of 37 C.F.R. 11.18(a) and (b). (See revised 37 C.F.R. § 42.11.) Also, the amendments will require at least 7 days before oral argument before exchange of demonstrative exhibits, instead of the previous 5 days. (See revised 37 C.F.R. § 42.70.)
The PTAB enacted the new rules in response to feedback on how to make the proceedings more fair and effective. As the AIA proceedings are still in their relative infancy, expect further revisions to the rules to ensure fairness and efficiency based on public comment.