In August 2015, the U.S. Patent and Trademark Office (USPTO) issued a notice of proposed rule changes for practice before the Patent Trial and Appeals Board (PTAB).1 The proposed rule changes are the second round of changes to PTAB proceedings instituted under the America Invents Act (AIA) that include Inter Partes Review, Post-Grant Reviews, and Covered Business Method reviews. The proposed changes are responsive in part to a nationwide listening tour conducted by the USPTO and public feedback regarding AIA trial proceedings.2The proposals relate to 1) the claim construction standard for PTAB trials; 2) new testimonial evidence submitted with a patent owner’s preliminary response; 3) Rule 11-type certification; and 4) word count for major briefing.3
Changes to Pre-Institution Practice
One of the proposed changes allows a patent owner to submit new testimonial evidence in support of a preliminary response.4 Such evidence is not currently allowed.5 This change responds to comments raising concerns that patent owners are disadvantaged by current rules that allow petitioner’s evidence to go unanswered before a trial is instituted.6 Having the option to submit testimonial evidence creates another layer of strategic considerations for the patent owner beyond the decision of whether or not to file a preliminary response in the first place.
The primary goal of a preliminary response is preventing institution, which is important to patent owners given the high rate of claim cancellation after an IPR is instituted.7 And patent owners have increasingly taken advantage of filing preliminary responses—over 85% of IPRs filed in fiscal year 2015 include a preliminary response.8 Even if permitted, however, it may not always be beneficial to submit an expert declaration with the preliminary response. In some cases, it may be more beneficial to wait until after an institution decision is issued to offer expert testimony specific to what the PTAB actually found persuasive in the petition. Waiting until after institution to offer testimonial evidence allows a patent owner the opportunity to fashion the testimony to the post-institution trial. Moreover, any evidence or arguments advanced prior to institution may not be useful to alter the view of the PTAB after institution such that providing some arguments pre-institution may limit a patent owner’s post-institution options or chance for success.
Another proposed rule change would allow that a petitioner to seek leave to file a reply to the patent owner’s preliminary response.9 In the past, petitioners were routinely denied the opportunity to reply to a preliminary response except in threshold circumstances, such as providing additional evidence to refute a one-year time bar.10 Although the notice does not elaborate under what conditions a reply would be permitted, it is likely that the submission of testimonial evidence with a preliminary response would provide justification for such leave. The proposed rules still ensure that any factual dispute material to the institution decision will be resolved in favor of the petitioner for purposes of making a determination about whether to institute.11
Changes to Certification of Filings
The USPTO has proposed a change to 37 C.F.R. § 42.11 “to prevent any misuse of the AIA proceedings.”12 The proposed change would require filings to include a Federal Rule of Civil Procedure Rule 11-type certification, including a provision for sanctions for misconduct in connection with such papers.13
The current rule requires “a duty of condor and good faith” during the course of proceedings.14 In combination with 37 C.F.R. § 42.12, the PTAB can impose sanctions against a party for misconduct.15 The PTAB has used this authority few times since the introduction of the AIA.16 The proposed new rule would give the PTAB more robust means with which to police misconduct.
Specifically, the new certification would require the filer to state that:
[T]o the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:
(1) It is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of the proceeding;
(2) The claims, defenses, and other legal contentions are warranted by existing law or by a non-frivolous argument for extending, modifying, or reversing existing law or for establishing new law;
(3) The factual contentions have evidentiary support; and
(4) The denials of factual contentions are warranted on the evidence.17
It is unclear in what situations the PTAB will use this broad verification, or what constitutes an “improper purpose.” The proposed change would provide an opportunity for the filer to withdraw or correct the challenged paper.18
The USPTO proposes using word counts in place of page limits for the petition, preliminary response, patent owner’s response, and petitioner’s reply.19 This change may minimize some of the complications parties have encountered in meeting page limits, for example, by citing extensively to declarations instead of thoroughly explaining arguments in the filings.
With respect to claim construction, the PTAB’s current standard is “broadest reasonable construction in light of the specification.”20 Following a request for comments, some advocated maintaining the current standard because of the “long-standing practice of giving patent claims their broadest reasonable interpretation during examination and during other post-issuance proceedings such as reexamination, reissue and interference.”21 Others suggested changing the construction standard to a Phillips-type standard because AIA trials “are adjudicative proceedings like litigation.”22 Ultimately, the proposed changes suggest maintaining the current standard except in the narrow category of cases involving a patent that will expire before the final written decision is issued.23 With this (lack of) change, the USPTO seems to be signaling that broadest reasonable interpretation is here to stay at least in part based on support from the Federal Circuit and USPTO history.24
Also proposed is a change to the timing from five days to seven for serving demonstrative exhibits to the other party prior to an oral hearing “to provide additional time for the parties to resolve disputes concerning demonstrative exhibits.”25
In the Federal Register notice, the USPTO stated that it will also “amend its Office Patent Trial Practice Guide to reflect developments in practice before the Office concerning how the Office handles additional discovery, live testimony, and confidential information.”26 The content of these changes will likely provide additional direction related to recent PTAB decisions and guidance.27
The proposed changes to the rules are refinements intended to “continue to ensure fairness and efficiency while meeting the congressional mandate.”28 As such, comments on the proposed rules are encouraged and will be accepted until October 19, 2015.