On April 1, 2016, the Patent Office published final rules affecting post grant proceedings before the Patent Trial and Appeal Board (“PTAB”). The new rules go into effect May 2, 2016, and will apply to “all AIA petitions filed on or after the effective date and to any ongoing preliminary proceeding or trial before the Office.”  The changes to the rules are summarized below.

Claim Construction Standard

Either party may request by motion, within 30 days from the filing of the petition, aPhillips-type construction if a party certifies that the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition.  (37 C.F.R. §§ 42.100(b), 42.200(b), 42.300(b)).  The filing of the motion will initiate a conference call with the PTAB to determine whether such a motion is appropriate under the circumstances and whether any other briefing is necessary for each party apply the appropriate construction standard.

Phillips-type construction is one where the claim terms are interpreted and accorded their plain and ordinary meaning.  Prior to the new rules, the “broadest reasonable construction” standard applied in post grant proceedings, absent actual expiration of the patent prior to institution, as articulated in In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015).  The “broadest reasonable interpretation” standard was often felt to be broader in scope than the Phillipsstandard.  The life of this newly permitted motion may not be a long one, because on January 15, 2016 the United States Supreme Court granted certiorari in theCuozzo case regarding whether that “broadest reasonable interpretation” claim construction standard is correct.

Patent Owner’s Preliminary Response – Testimonial Evidence

Patent owners may submit new testimonial evidence (i.e., by way of declarations) in support of preliminary responses to petitions. (37 C.F.R. §§ 42.107(a), 42.207(a)).  Prior to this new rule, patent owners could not submit “new” testimonial evidence with their preliminary responses.  There is no limit on the number of declarations that may be filed.  Any factual dispute created by testimonial evidence that is material to the institution decision will be viewed in a light most favorable to the petitioner.  In certain circumstances, the PTAB in its discretion may order limited discovery, including cross-examination of a witness before institution.  If good cause is shown, the petitioner may be afforded the right to reply to the preliminary response.  (37 C.F.R. §§ 42.108(c), 42.208(c)).

Rule-11 Type Certification

37 C.F.R. § 42.11 (duty of candor to the Patent Office) is amended to include a Rule 11-type certification requirement for all papers filed with the PTAB. The PTAB may impose an appropriate sanction on any attorney, registered practitioner, or party that violates the rule or is responsible for the violation.

Oral Hearing


Demonstrative exhibits must be served at least seven business days before oral argument and filed no later than the time of oral argument.  (37 C.F.R. § 42.70(b)).

 Live Testimony

The Patent Office will continue its present practice of considering requests for presentation of live testimony in an oral hearing on a case-by-case basis, but the Patent Office does not expect such live testimony will be required in every case where there is conflicting testimony.  When requested by the parties, however, and where the panel believes live testimony will be helpful in making a determination, the Patent Office will permit live testimony.  Amendments to the Rules of Practice for Trials Before the PTAB, 81 Fed. Reg. 18,750, 18,760 (April 1, 2016).

Word Count Limits

Many page limits have been changed to word counts:

  • A petition for IPR has a limit of 14,000 words instead of 60 pages (37 C.F.R. § 42.24(a)(1)(i))
  • Post-Grant Review and Covered Business Method Review petitions and responses have a limit of 18,700 words instead of 80 pages (37 C.F.R. § 42.24(a)(1)(ii), (iii))
  • Replies to patent owner responses have a limit of 5,600 words instead of 25 pages (37 C.F.R. § 42.24(c)(1))

For all other briefing, the USPTO will maintain a page limit. Motions to amend are now limited to 25 pages.  (37 C.F.R. § 42.24(a)(1)(vi)).  All other motions are limited to 15 pages.  (37 C.F.R. § 42.24(a)(1)(v)).  The word count or page limit does not include the table of contents, table of authorities, grounds for standing under § 42.104, § 42.204, or § 42.304, mandatory notices under § 42.8, certificate of service or word count, or appendix of exhibits or claim listing.  (37 C.F.R. § 42.24(a)(1)).

The Patent Office also noted that “petitions will no longer be reviewed to determine if any claim charts contain argument, thereby streamlining administrative review of petitions and reducing the number of non-compliant petitions that require corrections.” 81 Fed. Reg. at 18,762.

Motion to Amend

Rather than adopt new rules for motions to amend, the Patent Office noted in the rules package that standards for such motions are set forth in its priorMasterImage 3D, Inc. v. RealD Inc. decision.  Specifically, when filing a motion to amend, a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, which includes: (a) any material art in the prosecution history of the patent; (b) any material art of record in the current proceeding, including art asserted in grounds on which the PTAB did not institute review; and (c) any material art of record in any other proceeding before the Patent Office involving the patent.  The Patent Office emphasized that this requirement appropriately accounts for the lack of independent examination of substitute claims by the Patent Office.  81 Fed. Reg. at 18,754.

Real Party-In-Interest

The Patent Owner is permitted to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding, but it may be increasingly difficult to do so as the case progresses. The Patent Office stressed that “it is important to resolve real party-in-interest and privity issues as early as possible, preferably in the preliminary stage of the proceeding prior to institution, to avoid unnecessary delays and to minimize cost and burden on the parties and the resources of the Office.”  With respect to a late challenge that reasonably could have been raised earlier in the proceeding, the Patent Office will consider the impact of such a delay on a case-by-case basis, including whether the delay is unwarranted or prejudicial.  The Patent Office will also consider that impact when deciding whether to grant a motion for additional discovery based on a real party-in-interest or privity issue.  The Patent Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide.  81 Fed. Reg. at 18,760-761.

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