Today, April 1, 2016, the US Patent and Trademark Office (USPTO) published its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which amends the existing consolidated set of rules relating to USPTO trial practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM), and derivation proceedings that implemented provisions of the America Invents Act (AIA) providing for trials before the USPTO. These rules will take effect in 30 days and will apply to all AIA petitions filed on or after that date and any ongoing AIA preliminary proceeding or trial before the USPTO; patent owners and petitioners should familiarize themselves with these amended rules so that they are prepared once the rules go into effect.

The amendments to Chapter 42 of Title 37 of the Code of Federal Regulations (CFR) include changes relating to five main topics, set forth below. These changes largely track the proposed rules promulgated by the USPTO earlier this year, which we analyzed in our August 2015 alert: Recent Proposed Rules Have Potential to Provide Patent Owners Additional Edge.

Claim Construction Standard

Under the revised 37 CFR §§ 42.100(b), 42.200(b), 42.300(b), for IPRs, PGRs, and CBMs, respectively, a party may request by motion a district court-type (i.e. Phillips standard) construction if it certifies that the patent will expire within 18 months of the entry of the Notice of Filing Date Accorded to Petition. As we noted in our August 2015 alert, this amendment addresses situations in which a patent owner would have no viable opportunity to amend the claims at the USPTO. By implementing a district court-type construction in lieu of the broadest reasonable interpretation standard, claims that would expire before the final decision in an AIA proceeding would be less prone to being invalidated.

Since the request for a district court-type construction must be done by motion, a conference call with the panel would be scheduled to resolve the appropriateness of such a motion under the circumstances and determine whether any briefing is necessary for each party to adequately address the appropriate claim construction standard.

Patent Owner Preliminary Response

Patent owners may submit new testimonial evidence with their preliminary response.1 However, if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of the petitioner solely for institution purposes.2 If such supporting evidence is submitted, cross-examination of witnesses submitting such testimony would be permitted only after institution of the proceeding.

A preliminary response will be subject to a word count limit rather than a page limit, as set forth in the ‘Word Count’ discussion below.

Oral Hearing

Demonstrative exhibits must be served at least seven business days before the oral argument and filed no later than the time of the oral argument.3

Word Count

Instead of a page limit, a word count will now be used for petitions, patent owner preliminary responses, patent owner responses, and replies.4 The limit does not include table of contents, table of authorities, and other delineated non-argumentative portions of the papers. Motions, including motions to amend and corresponding replies, are still controlled by page limits instead of word count limits. The new word count limits are as follows:

  • Petition, preliminary response, patent owner response (IPR and derivation): 14,000 words;5
  • Petition, preliminary response, patent owner response (PGR and CBM): 18,700 words;6
  • Replies to patent owner responses to petitions: 5,600 words.7

A certification stating the number of words in the paper must be included for any paper whose length is specified by word count limits.

Rule 11-Type Certification

By presenting to the PTAB a petition, response, written motion or other paper, an attorney, registered practitioner, or unrepresented party attests to compliance with the certifications under 37 CFR 11.18(b)(2). These certifications include Rule 11 type representations, including:

  1. The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the USPTO;
  2. The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
  3. The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
  4. The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.8

The PTAB may impose a sanction on an attorney, registered practitioner, or party for violation of that section. Section 42.11(d) further sets forth a procedure for sanctions.

Additionally, every petition, response, written motion, and other paper filed in a proceeding must comply with the signature requirements set forth in 37 CFR 11.18(a), the USPTO’s standard rule for all correspondence with the USPTO.9 The PTAB may expunge any unsigned submission unless the omission is promptly corrected after being called to the counsel’s or party’s attention.

Pilot Program

The USPTO decided to not institute a proposed pilot program under which a single judge, rather than a three-judge panel, would conduct some AIA reviews.

Next Steps

These amendments become effective on May 2, 2016 and apply to all AIA petitions filed on or after that date. The amendments will also apply to any ongoing AIA preliminary proceeding or trial before the USPTO. At this stage, patent owners and petitioners should position themselves to avail of the amended rules once they go into effect. This includes steps to:

  1. evaluate claim constructions under the Phillips standard if the patent is set to expire soon;
  2. consider testimonial evidence (e.g., expert declarations) that can be relied upon in the response to a patent challenge;
  3. ensure that submissions to the PTAB do not exceed the new word court limitations;
  4. ensure that submissions to the PTAB have merit and are not brought for an improper purpose; and
  5. consider whether petitioners have conducted a proper investigation of the patent to ensure that the petition is not frivolous.