The United States Patent and Trademark Office (USPTO) recently issued its proposed changes to the rules for AIA trials, which include inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business methods (CBM). Former Director David Kappos had promised to revisit the rules, and the USPTO is doing so nearly three years after establishing AIA trials. The litigation landscape has changed drastically since then, and changes are continuing. Importantly, the USPTO responded to comments received in response to a preliminary request for comments. These responses may prove important to ongoing practices, including interaction between AIA trials, reissues, continuations and reexaminations.

The proposed rules address the following areas:

  1. Claim construction standard
  2. A patent owner’s motions to amend
  3. A patent owner’s preliminary response
  4. Additional discovery
  5. Obviousness
  6. Real party-in-interest
  7. Multiple proceedings
  8. Extension of one-year period to issue a final determination
  9. Oral hearing
  10. General topics
  11. Rule 11-type sanctions

Summary of the proposed rules and PTAB’s response to comments

Below is a summary of the proposed changes and the Patent Trial and Appeal Board's (PTAB) response to the comments that were submitted.

Claim construction

The PTAB proposes that Phillips claim construction should be applied to claims for patents that will expire prior to the issuance of a final written decision.

Patent owner’s motions to amend

The ultimate burden of persuasion of patentability will remain with the patent owner when submitting a motion to amend. Patent owners are encouraged to submit only a single substitute claim for each canceled claim, even though the rules do not prohibit proposing more than one substitute claim.

Patent owner’s preliminary response

The rules being proposed would permit the patent owner to submit new testimonial evidence in the patent owner’s preliminary response. The PTAB plans to resolve in favor of the petitioner any material factual disputes found in the petition, preliminary response and, if any, a reply. Any cross-examination will occur after institution.

Additional discovery

The PTAB does not propose to change how it handles requests for additional discovery. Currently, the PTAB utilizes the factors provided in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26). The PTAB considers the Garmin factors flexible and able to provide a representative framework that can guide the parties and help the PTAB decide whether additional discovery is necessary in the interest of justice or supported by a good cause. Requests that are specific, narrowly tailored and not overly burdensome are most likely to be granted the additional discovery.

Obviousness

The PTAB does not consider evidence of non-obviousness as part of routine discovery. Instead, such evidence falls under additional discovery. Therefore, if a patent owner wishes to obtain such evidence, then a request for additional discovery needs to be submitted by the patent owner. The PTAB explains it will decide such requests on a case-by-case basis using the Garmin factors to assist in the determination. The PTAB will seek feedback as the case law further develops to determine whether a more specific rule will be needed. Infringement contentions or allegations will not be sufficient because such statements fail to explain whether the commercial success of the petitioner’s product derives from the claimed feature.

Real party-in-interest

The PTAB will generally permit a patent owner to raise a real party-in-interest or privy challenge at any time during the post-grant proceeding. Concerning late challenges, the PTAB will decide on a case-by-case basis whether the lateness is uncalled for or prejudicial, including when such a challenge is in a request for additional discovery. The statute mandates that all real parties-in-interest be identified at the time of filing the petition. Therefore any change to correct the identification will effect the filing date of the petition. The ultimate burden of proof concerning the identification of all real parties-in-interest lies with the petitioner, because the petitioner is more likely than the patent owner to have access to evidence relevant to the issue whether all real parties-in-interest have been identified in the petition.

Multiple proceedings

The PTAB decided after reviewing the comments that no changes are needed concerning how the PTAB handles multiple proceedings. However, the PTAB agreed with commenters that the patent owner’s preliminary response period may be altered when appropriate. The PTAB also agreed with commenters that the PTAB should consider whether a petitioner that filed a later petition on the same patent claims is amenable to joinder. In lieu of providing rigid rules concerning the propriety of a stay, transfer, consolidation or termination where multiple proceedings are directed to the same patent claims, the PTAB will allow a restrained evolution to develop on a case-by-case basis through its body of case law.

When considering whether to institute later-filed petitions on the same patent claims, the PTAB will follow its current and later-developed body of case law. Currently the PTAB is considers the following nonexclusive factors: (1) the degree of overlap between the prior art and arguments raised in the multiple petitions; (2) the identity of the petitioner in the later-filed proceeding; (3) whether the petitioner in the later-filed proceeding uses a prior decision on institution as a roadmap to refine and recycle arguments presented in an earlier-filed petition; (4) whether the circumstances surrounding the later-filed petition raises the specter of patent owner harassment; and (5) whether granting the later-filed petition is in the interests of justice.

Extension of one-year period to issue a final determination

The PTAB will strive to meet the one-year statutory deadline, and will only extend if the facts and circumstance warrant an extension.

Oral hearing

The PTAB will continue with its case-by-case practice when considering requests for live testimony at the oral hearing. There will be no change from the PTAB’s current practice as to when rebuttal time is permitted and for whom. The PTAB’s practice gives the party with the burden of proof on an issue an opportunity to rebut.

Modification to the rules is proposed concerning the exchange of demonstratives. The proposal requires the parties to exchange demonstratives seven business days before the final hearing date.

The PTAB will try to have all judges present during all sessions of multiple session final arguments, although schedule conflicts may prevent a judge from attending a session on a related case.

General topics

The PTAB has changed its procedure for determining the maximum length of petitions, patent owner’s preliminary response and response to petition, and replies. The following limits are proposed:

  1. Petition requesting inter partes review: 14,000 words
  2. Petition requesting post-grant review: 18,700 words
  3. Petition requesting covered business method patent review: 18,700 words
  4. Petition requesting derivation proceeding: 14,000 words
  5. Motions (excluding motions to amend): 15 pages
  6. Motions to amend: 25 pages
  7. Word counts for a patent owner preliminary response to petition are the same as the word counts for the petition
  8. Word counts for a patent owner response to petition are the same as the word counts for the petition
  9. Page limits for oppositions are the same as those for corresponding motions
  10. Replies to patent owner responses to petitions: 5,600 words
  11. Replies to oppositions (excluding replies to oppositions to motions to amend): 5 pages
  12. Replies to oppositions to motions to amend: 12 pages

Given the proposal to switch the limit in length from pages to word count, the practice of not having argument in a claim chart is moot.

Rule 11-type certification

The PTAB proposes to amend 37 CFR § 42.11 to include a Rule 11-type certification for all papers filed with the PTAB. Thus, an attorney could be sanctioned for not performing an adequate investigation before submitting the paper to the PTAB.

Conclusion

The PTAB appears to be reacting to perceptions that it is too pro-petitioner. Given these proposed changes, as well as the PTAB’s decision to maintain certain current practices without change after reviewing the comments, clients should consider submitting comments to the extent they disagree with that perception and the changes. We are available to advise on making comments, prior comments and comments to be submitted by the major IP organizations, including the Intellectual Property Owners Association, the American Intellectual Property Law Association and the American Bar Association.