The U.S. Patent and Trademark Office (“PTO”) issued amendments to its “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings, which will be effective in all current and future proceedings starting on May 2, 2016. Most notably, these amendments allow a patent owner to submit testimonial evidence—in particular, competing expert testimony—with its preliminary response to a petition for IPR, CBM or PGR. This is a major shift from past practice, when patent owners were not permitted to submit new testimony before the PTO decided the issue of institution. Although genuine issues of material fact created by the new testimony are to be resolved in favor of the petitioner in deciding institution, this change could set up a “battle of the experts” and reduce institution rates.
The PTO’s amendments also include a new Fed.R.Civ.P. Rule 11-type certification for all papers filed with the PTO, as well as authority to impose sanctions for non-compliance. While many might focus on this rule amendment’s application to petitions, it may have an interesting effect on patent owners as well; for example, constraining challenges based on the real party-in-interest requirements. Other rule amendments adopted by the PTO include (a) allowing parties to request the application of the claim construction standard used in district courts (set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)) if a patent is set to expire within 18 months after the PTO accords the filing date, and (b) modifying the limits on the lengths of petitions, patent owner preliminary responses and responses, and petitioner replies to implement word count limits instead of the current page limits.
The PTO had also considered, but decided not to implement, a pilot program under which a single judge (rather than three) would determine whether to institute a case. A panel of at least three judges will continue to decide both institution and final written decisions.