A second set of proposed rule changes to AIA post-grant proceedings was published by the Patent Office on August 20, 2015.  The proposed rule changes cover many different aspects of AIA proceedings but, are generally favorable to patent owners.  While this post discusses several issues addressed in the proposed rule changes, the proposal (available here) is worth reading in its entirety as it provides useful insight as to how the Patent Office intends to address various issues in AIA proceedings.

One issue addressed in the proposed rule changes is one of the most contentious issues for patent owners since the enactment of the AIA–namely, the procedure for amending claims in AIA proceedings.  The proposed rule changes, although acknowledging improvements in this area are needed, do not include any specific rule changes for motions to amend claims.  Rather, the proposed rule changes contemplate improving and clarifying the claim amendment process by designating appropriate PTAB decisions as precedential or informative. 

One such decision discussed in the rule proposal is the PTAB’s MasterImage decision, which the Board recently designated as “representative”.  The MasterImage decision clarified the requirements for patent owners to demonstrate their proposed amendments are patentable (see MasterImage 3D, Inc. v. RealD Inc., IPR2015–00040, Paper 42 (PTAB July 15, 2015)), and many, including PTAB Chief Judge Nathan Kelley, believe theMasterImage decision paves the way for easier claim amendments in AIA proceedings.

The Patent Office also indicated in the proposed rule changes that it would stand pat on its “broadest reasonable interpretation” (“BRI”) claim construction standard currently applied in AIA proceedings.  This decision is not surprising in light of the Board recently receiving the Federal Circuit’s blessing to apply the BRI standard.  See In re Cuozzo Speed Technologies LLC, No. 2014-1301 (Fed. Cir. July 8, 2015).  The Patent Office also clarified in the proposed rule changes that it would apply a Phillips-type claim construction standard where the challenged patent is expired or will expire during the post-grant proceeding.  Although the Board had already been applying the Phillips district court claim construction standard in some of these cases, there was no firm rule, so the proposed rules provide at least some clarity to AIA proceedings.

The proposal also includes rule changes that would permit patent owners to include expert declarations and other testimonial evidence in response to challengers’ petitions.  Under current rules, patent owners are not entitled to submit testimonial evidence in preliminary responses, which many have argued put patent owners at a disadvantage by allowing petitioners’ evidence to go unanswered before trial is instituted.  The proposed rule changes would allow patent owners to rebut expert testimony and evidence at the institution stage, rather than having to wait until trial is instituted to present rebuttal evidence.

The proposed rules will not be finalized until after the public commentary period ends on October 19, 2015.  The proposed rule changes, while not drastically changing current practice, would favor patent owners by, among other things, allowing patent owners to rebut expert testimony and evidence prior to institution of a trial, and by allowing the Office to further refine claim amendment procedures through appropriate PTAB decisions.  Practitioners should stay tuned for a final rule announcement in the coming months.