The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed by the Patent Office on August 20, 2015, but the final rules have several differences of potential importance.

  • Patent Owner's Preliminary Response: The new rules permit a patent owner to file new testimonial evidence—i.e., evidence created specifically to respond to the petition, such as an expert declaration—with its preliminary response. Prior to the rule change, a patent owner could only submit testimonial evidence if it had been prepared before the filing of the petition. For example, a patent owner previously was permitted to submit deposition testimony taken in another proceeding prior to filing of the petition. The new rules enable a patent owner to offer testimonial evidence at the pre-institution stage created to respond directly to the petition. The Patent Office declined to impose any restriction on the number of declarations a patent owner may submit with its preliminary response.

In its announcement of the proposed rules last August, the Patent Office had advised that "[i]n order to be able to meet the three-month statutory deadline for issuing a decision on institution, the rules will provide expressly that no right of cross-examination of a declarant exists before institution." However, the new rules contain no such express prohibition, and in its published responses to comments received on the proposed rules, the Patent Office wrote that "[i]n appropriate circumstances, a panel, in its discretion, may order some limited discovery, including cross-examination of witnesses, before institution."

The new rules also make clear that if the testimonial evidence submitted by the patent owner creates a genuine issue of factual dispute, the Board will resolve the dispute in favor of the petitioner for the limited purpose of deciding whether to institute inter partes review. At the same time, the Patent Office noted, in response to a comment, that certain types of factual disputes could be resolved at the pre-institution stage: "not every factual contradiction rises to the level of a genuine issue of material fact that would preclude a decision on the factual issue at the preliminary stage of a proceeding to assess whether petitioner has met the threshold burden for institution of a trial."

  • Claim Construction Standard: The new rules make no change to the application of the broadest reasonable interpretation standard for claim construction for patents that will not expire prior to issuance of a final written decision, and also make no change to the application of a Phillips standard to patents that are expired. Consistent with the proposed rules, the new rules will also apply the Phillips standard to patents that are not expired at the time the petition is filed, but will expire prior to issuance of the final written decision. For patents that may fall within this category, the new rules introduce a procedure not previewed in the proposed rules for determining whether the Phillips standard should be applied. Specifically, under the new rules, either party may request by motion a Phillips construction if the party certifies that the patent will expire within eighteen months from the petition's filing date. The panel will then convene a conference call to discuss the appropriateness of such a motion and whether any additional briefing is necessary. In response to a comment, the Patent Office noted that this procedure "provides the panel with a way to manage efficiently a proceeding where the claim construction may differ from what a petitioner has presented in its petition."
  • Word Count Limit: The new rules revise the briefing requirements for the petition, patent owner preliminary response, and petitioner's reply brief to set a word count limit, without any restriction as to the number of pages. In response to comments, the Patent Office announced that it will exclude grounds for standing under 37 CFR 42.104, 42.204, or 42.304, and mandatory notices under 37 CFR 42.8, from the word count limits.
  • Motions to Amend: Although the new rules make no changes to the practice for motions to amend, the Patent Office, in response to comments, indicated that it would "further consider ways to promote uniformity in the requirements for a motion to amend, such as by designating opinions precedential, issuing a standing order setting forth what requirements govern a proceeding for motions to amend, or other means."
  • Real Party-in-Interest Issues: The new rules clarify that real party-in-interest issues can be raised at any time in the proceeding, but the Patent Office emphasized that it is "important" to resolve these issues "as early as possible, preferably in the preliminary stage of the proceeding prior to institution," to avoid unnecessary delays and to minimize cost and burden. If the patent owner makes a late challenge regarding real party-in-interest, the Patent Office will consider "whether the delay is unwarranted or prejudicial," and will also consider "that impact when deciding whether to grant a motion for additional discovery based on a real party-in-interest or privity issue." The Patent Office also noted that it plans to add further discussion to real party-in-interest issues to the Patent Trial Practice Guide.
  • Additional Discovery: The new rules make no changes to the criteria for obtaining additional discovery. The Patent Office will continue to use the Garmin factors.
  • Rule 11-Type Certification and Sanctions: The new rules adopt a Rule 11-type certification for all papers filed with the Board. Before a party may move for sanctions, it must serve its proposed motion on the other party and allow 21 days for corrective action. The Patent Office also modified the sanctions provision included in the proposed rules to remove the potential for sanctions on law firms, and instead have any sanctions directed to practitioners and parties alone.