Expected Changes to Patentee Preliminary Response Among Noteworthy Changes

The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here). The proposed changes are largely expected given the discussion coming out of the agency for months on these issues.  The proposals are as follows:  

  • Allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.
  • Add a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.
  • Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.
  • Explains that the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof. 
  • Changes the page limit system for petitions and preliminary response to account for word count (i.e., IPR petition 14,000 words or 60 pages). New word count would permit argument to be added to claim charts.
  • Require demonstratives be submitted 7 days before oral argument (currently 5 days).

Obviously, the clarification of the claim construction used for soon-to-be-expired patents, and the ability to file testimonial evidence in a preliminary response are the most noteworthy changes. Given that disputed facts are construed in favor of the petitioner, I would not expect the new testimony to advance the needle much for patentees. But, this change will dispense with yet another "unfairness"criticism that has little practical impact in most cases.

In the Notice the Office also explains that:

  • The Trial practice Guide is being updated/revised
  • Oral testimony will remain a case-by-case decision
  • The Office may issue a request for comment on the use of one-judge panels on institution (pilot program)
  • The Garmin factors remain, although when seeking discovery on RPI and privy, the timing of the request will also weigh heavily
  • A fulsome nexus showing is not required for discovery on secondary indicia, but some explanation of nexus is necessary
  • Decisions on how to manage related reissues and reexaminations will be case-by-case

As will all Notice and Comment Rule making, these changes will not go into effect until the Final rules publish some months from now, likely early 2016. (Comments will be due from the public in October).