The PTAB’s long-awaited proposed rule package is now ready and scheduled to be published in the Federal Register tomorrow. The PTO is not proposing changing its claim construction standards, or its rules regarding motions to amend, but it proposes some significant procedural changes, including allowing patent owners to file new evidence with preliminary responses, and changes to page limits in primary filings. The PTO also indicated that a new Office Patent Trial Practice Guide (last updated in 2012) will be published with the final rulemaking for the proposed rules.

  • Claim Construction Standard

    The PTO does not intend to amend its rules concerning claim construction and will continue to apply the broadest reasonable interpretation standard to claims in an unexpired patent at issue in an AIA proceeding. If a patent will expire prior to the issuance of the final decision, however, the PTO proposes using a Phillips-type claim construction.
  • Patent Owner’s Motions to Amend

    The PTO does not intend to change its rules regarding motions to amend and believes its recent MasterImage decision addresses many of the commenters’ questions. (That decision echoed the decision in REG Synthetic Fuels, which we recently wrote about.)
  • Patent Owner’s Preliminary Response

    The PTO proposes amending the rules to allow the patent owner to file new testimonial evidence with its preliminary response. In order to be able to meet the three-month statutory deadline for issuing a decision on institution, however, the rules will not allow the patent owner to cross-examine the declarant before institution.

But, the PTO proposes that any factual disputes raised in the preliminary response (or by the declarant) will be resolved in favor of the petitioner solely for purposes of deciding whether to institute. Under the proposed new rules, the petitioner also will be given an opportunity to seek permission to file a reply brief to respond to a preliminary response that presents testimonial evidence, though it will not be able to file such a reply as of right.

  • Additional Discovery

    The PTO will continue to apply the Garmin factors on a case-by-case basis when considering whether additional discovery is necessary in the interest of justice.
  • Real Party in Interest

    The PTO is not changing its rules, but in general, the PTAB will permit a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding. With respect to a late challenge that reasonably could have been raised earlier in the proceeding, the PTAB will consider the impact of such a delay on a case-by-case basis, including whether the delay is unwarranted or prejudicial. 
  • Concurrent Proceedings

    The PTO responded to many comments regarding how it will handle various proceedings (e.g., reissue, reexam, IPR, etc.) that may be proceeding concurrently with an AIA proceeding. The PTO largely said in its responses that it will handle each case on its own facts.
  • Oral Hearing

    The PTO does not propose any new rules concerning the conduct of oral hearings, and it does not expect that oral testimony will be required in every case where there is conflicting testimony. When requested by the parties, however, and where the panel believes oral testimony will be helpful in making a determination, the PTAB will permit oral testimony. The format for presenting live testimony is left to the discretion of the panel.

The PTO proposes amending 37 CFR § 42.70(b) to require the parties exchange demonstrative exhibits at least seven, not five, days before oral argument to provide additional time for the parties to resolve any disputes.

  • Word Count Limits

    The PTO proposes that the length of the petition, preliminary response, patent owner response, and petitioner’s reply brief be dictated by word counts instead of page limits. This change would also result in the petitions no longer being reviewed to determine if any claim charts contain argument. The PTO suggests this will streamline administrative review of petitions and reduce the number of non-compliant petitions that require correction. The new proposed lengths are below:
    • Petitions: 14,000 words (IPR) / 18,700 words (PGR/CBM)
    • Petitioner Replies: 5,600 words
  • Rule 11-Type Certification

    The PTO proposes amending 37 CFR § 42.11 (which prescribes the duty of candor owed to the PTO in AIA proceedings) to include a Federal Rule of Civil Procedure Rule 11-type certification for all papers filed with the PTAB in AIA proceedings.

Any comments on these proposed rules can be submitted to the PTO within 60 days of the publication in the Federal Register (likely tomorrow).

The PTAB will also be discussing its proposed rule changes at its upcoming roadshows entitled “Enhancing Patent Quality and Conducting AIA Trials,” to be held on August 24, 2015 in Santa Clara, California; August 26, 2015 in Dallas, Texas; and August 28, 2015 in Alexandria, Virginia.