As mentioned in a previous article, the Patent Trial and Appeal Board (PTAB) held a series of roundtables throughout the United States this spring to solicit public feedback on AIA trials. Having received some feedback during the roundtables, the United States Patent and Trademark Office (USPTO) issued a Federal Register Notice on June 27, 2014 formally seeking written public comments on AIA trials, including the AIA trial rules and the trial practice guide. The deadline for submitting comments is on or before September 16, 2014.

The USPTO is seeking public comments on a vast range of issues, including:

  • the applicable claim construction standard;
  • motions to amend;
  • patent owner preliminary responses;
  • obviousness;
  • real party in interest;
  • additional discovery;
  • multiple proceedings;
  • extension of the one year period to issue final determinations; and
  • oral hearings.

The USPTO has devised a series of seventeen questions to solicit public input, which are shown at the end of the article. Many of these questions are directed to recent PTAB decisions in AIA trials. 

Of these questions, seven are directed to issues pertaining to multiple proceedings for the same patent, such as concurrent AIA trials, concurrent reexamination proceedings, and concurrent reissue proceedings, or additional proceedings involving the same patent after the filing of a petition for an AIA trial. For such proceedings, the USPTO is seeking input as to when to stay, when to consolidate, and even when to terminate one proceeding in favor of another.

Of particular interest to many practitioners, the USPTO is seeking input as to needed changes to its motion to amend practice. This is not surprising since, thus far, there has been only one successful motion to amend (and it was unopposed as part of a settlement).

In a July 14, 2014 post on the Director’s Forum blog, Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, reiterated that the USPTO needs help from the public to improve AIA trials. In her post, Ms. Lee highlighted the following questions:

  • Under what circumstances, if any, should the PTAB decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
  • What modifications, if any, should be made to the PTAB’s practice regarding motions to amend?
  • How should multiple proceedings before the USPTO involving the same patent be coordinated?

Thus, it appears that the claim construction standard, motions to amend, and multiple concurrent USPTO proceedings are of particular interest to the USPTO.

The Federal Register Notice and Director’s Forum blog indicate that the USPTO is actively listening to the public stakeholders in AIA trials to improve and streamline these proceedings. With the sheer volume of AIA trial proceedings constantly increasing (close to 1,700 as of July 10, 2014), the PTAB seems to be doing its best to continually improve the proceedings based on public feedback. We will continue monitoring the developments on AIA trial proceedings and the comments the PTO receives, and will provide updates as warranted.

Questions in the USPTO's "Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board"  (79 Fed. Reg. 36747-36477)

Claim Construction Standard:

  1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?

Motion to Amend:

  1. What modifications, if any, should be made to the Board’s practice regarding motions to amend?

Patent Owner Preliminary Response:

  1. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?

Obviousness:

  1. Under what circumstances should the Board permit discovery of evidence of nonobviousness held by the petitioner, for example, evidence of commercial success for a product of the petitioner? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?

Real Party in Interest:

  1. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Additional Discovery:

  1. Are the factors enumerated in the Board's decision in Garmin v. Cuozzo, IPR2012-00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?

Multiple Proceedings:

  1. How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding,
  2. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed?
  3. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted?
  4. Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted?
  5. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be consolidated with an AIA trial?
  6. How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding.
  7. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a reissue proceeding?

Extension of 1 Year Period to Issue Final Determination:

  1. What circumstances should constitute a finding of good cause to extend the 1-year period for the Board to issue a final determination in an AIA trial?

Oral Hearing:

  1. Under what circumstances, if any, should live testimony be permitted at the oral hearing?
  2. What changes, if any, should be made to the format of the oral hearing?

General:

  1. What other changes can and should be made in AIA trial proceedings? For example, should changes be made to the Board's approach to instituting petitions, page limits, or request for rehearing practice?