On April 1, 2016, the USPTO announced changes to the Rules of Practice for review proceedings before the PTAB.
Among the changes, the new rules allow patent owners to submit testimonial evidence in preliminary responses to petitions for Inter Partes Review and Post Grant Review before the PTAB. This much-anticipated change opens the door for expert testimony on behalf of patent owners prior to institution of a trial, and provides the PTAB a more balanced view of the merits of a petition when deciding if a trial should be instituted. Previously, the rules permitted only testimony of petitioners and produced what many perceived as patent-unfriendly results. In addition to this leveling of the pre-institution playing field, the change should shorten the time-to-resolution in many disputes, as the balance assessment of the merits will occur earlier, prior to institution, when the parties and the PTAB are more inclined to early disposition, as opposed to during trial under the previous rules.
In a nod to practitioners concerned with frivolous petitions for review before the PTAB, the new rules require a certification for petitions, responses, motions, and other papers filed in a proceeding, similar to Rule 11 certifications in Federal Courts. The new rules also provide for sanctions against violators of the new certifications. The USPTO expects the impact of these provisions to be mostly that of a deterrent.
The changes also provide relief to parties struggling to satisfy page limits in briefs submitted to the PTAB. Page limits in petitions, patent owner preliminary responses, patent owner responses, and petitioner’s replies have been dropped in favor of word counts. In an otherwise unremarkable change, the shift to word counts should make Inter Partes Review, Post Grant Review, and Covered Business Method proceedings more efficient, and should improve the overall advocacy for the parties through more effective use of illustrations and demonstratives without consuming valuable page-space.
The changes modified the claim construction standard for patents expiring during the review proceedings from the “broadest reasonable interpretation” to a Phillips-type claim construction – the familiar “ordinary and customary meaning” standard used in the Federal Courts. Still intact is the broadest reasonable interpretation standard for patents under review before the PTAB where the patent owner may still have an opportunity to amend the claims.
The new rules go into effect on May 2, 2016.