The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May 2, 2016, and will apply to “all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office.”

The amendments implemented by this final rule follow a proposed rule, published in August 2015, concerning proposed changes to the rules and Patent Trial Practice Guide. Our previous reporting on that proposed rule may be found here. And, this final rule takes effect about a year after another final rule implemented AIA trial proceeding so-called “quick fixes” in May 2015.

As summarized by the Patent Office, these changes in this final rule “address the claim construction standard for AIA trials involving soon-to-be expired patents, new testimonial evidence submitted with a patent owner’s preliminary response, Rule 11-type certification, and word count for major briefing.” Changes include:

  • Patent Owner Preliminary Response: Patent owners may file new testimonial evidence with a preliminary response, such as expert declarations. However, any “genuine issue of material fact created by such testimonial evidence, will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute” a proceeding.
  • Claim Construction for Soon-to-Expire Patents: Upon request, the PTAB will apply a district court-type Phillips claim construction standard (rather than the “broadest reasonable interpretation” standard) in proceedings where the challenged patent will expire before a final written decision issues. The PTAB previously applied the district court-type Phillips standard only upon a challenged patent’s expiration. For the district court-type Phillips claim construction standard to apply, not later than 30 days from the filing of the petition a party must file a motion certifying that the challenged patent will expire within 18 months from the Notice of Filing Date Accorded to the Petition.
  • Rule 11-Type Certification and Sanctions: All filed papers must include a signature and certification akin to that required by Rule 11 of the Federal Rules of Civil Procedure, to which all filing attorneys must attest. A party who believes that there has been a violation of these requirements may request authorization from the PTAB to file a motion for sanctions. However, the other party must first be served with a copy of the proposed motion at least 21 days before any request for authorization. In addition, the PTAB may independently order an attorney or party to explain why its conduct has not violated the certification requirements (as set forth in 37 C.F.R. § 11.18(b)(2)). The PTAB may order a sanction, “limited to what suffices to deter repetition of the conduct,” and award to the prevailing party its reasonable expenses incurred in connection with any motion for sanctions, including attorneys’ fees.
  • Word-Counts for “Core” Papers: The previous page-limits for certain “core” papers have been replaced with word counts. Petitions, patent owner preliminary responses, and patent owner responses are now limited to 14,000 words in inter partes review and derivation proceedings (18,700 words in covered business method patent review and post-grant review proceedings). Replies to patent owner responses in all proceedings are now limited to 5,600 words. All papers with word-count limits must be accompanied by a certification stating the number of words in the paper.
  • Exhibits Used at the Oral Hearing: Any demonstratives or other exhibits must be served at least seven days prior to the oral hearing.

This final rule also summarizes and addresses comments received by the Patent Office from the public concerning its previously proposed rule. These responses sometimes provide further guidance concerning the Patent Office’s understanding of an array of AIA trial proceeding issues and practices, including motions to amend, additional discovery, real parties-in-interest, multiple related proceedings, and live testimony at oral hearings.

In the final rule, the Patent Office confirmed its position that the “broadest reasonable interpretation” claim construction standard is appropriate for inter partes review proceedings (citing In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. July 8, 2015)). Our earlier reporting concerning Cuozzo may be found here and here. The Supreme Court has granted Cuozzo Speed Technologies LLC’s request for certiorari and will hear oral argument next week (April 25, 2016). As such, the Federal Circuit rulings and Patent Office rules may not be the final word on AIA trial proceeding’s use of the “broadest reasonable interpretation” standard.

The PTAB will host a special “Boardside Chat” webinar, beginning at noon on April 26, 2016, to address the new rules. The webinar is free to attend and is accessible here.