April 1, 2016

New PTAB Trial Rules Will Apply to AIA Proceedings Effective May 2

On April 1, the United States Patent & Trademark Office published final rules impacting AIA trials heard by the Patent Trial & Appeal Board. These final rules address the claim construction standard for AIA trials involving soon-to-be expired patents, new testimonial evidence submitted with a patent owner’s preliminary response, Rule 11-type certification, and word count for major briefing. The USPTO will also amend its USPTO Patent Trial Practice Guide to comport with these rule changes and to reflect developments in practice before the PTAB concerning how the USPTO handles additional discovery, live testimony, and confidential information. The new rules will apply to “all AIA petitions filed on or after the effective date [May 2] and to any ongoing AIA preliminary proceeding or trial before the Office.”

Early last year, the USPTO released a set of “quick fix” changes to AIA trial procedures before the Patent Trial and Appeal Board (PTAB). On August 20, 2015, the USPTO proposed a second set of rule changes that addressed more significant issues and proposed revisions to the USPTO Patent Trial Practice Guide. The USPTO received comments from the public on these proposed rules, and final rules published in the Federal Register on April 1, 2016. The rules will go into effect on May 2. The new rules will apply to “all AIA petitions filed on or after the effective date [May 2] and to any ongoing AIA preliminary proceeding or trial before the Office.” The final rules include:

  • Claim Construction. If the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition, either party may request, by a motion filed no later than 30 days from the filing of the petition, that a Phillips-type (district court) claim construction standard be used to interpret the claims, rather than the broadest reasonable construction standard usually applied in AIA trial proceedings. The motion will trigger a conference call with the PTAB to discuss the request to resolve whether such a motion is appropriate under the circumstances and whether any other briefing is necessary for each party to be able to address adequately the appropriate construction standard. For instance, petitioner may be afforded an opportunity to address a Phillips-type construction analysis before patent owner is required to file its preliminary response.
  • Motion to Amend. Codifying Idle Free and other PTAB decisions, the patent owner is required to show, in its motion to amend, patentability of the proposed amended claims over: 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 USPTO involving the patent, in addition to showing patentability over prior art of record in the proceeding.
  • Patent Owner’s Preliminary Response. Patent owner may file new testimonial evidence without any limit on scope with its preliminary response. Any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of determining whether to institute a trial. There is no limit on the number of declarations that may be submitted.  In appropriate circumstances, a panel, in its discretion, may order some limited discovery, including cross-examination of witnesses, before institution. The petitioner may be afforded the right to reply, as well, if good cause is shown.
  • Real Party-In-Interest. The USPTO will generally permit a patent owner to raise a challenge regarding a real party-in-interest or privy at any time during a trial proceeding, but it may be more difficult as the case goes on.
  • Live Testimony. The USPTO will continue its present practice of considering requests to present live testimony in an oral hearing on a case-by-case basis, but does not expect that 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 PTAB will permit live testimony.
  • Rule 11. The USPTO will amend § 42.11, which prescribes the duty of candor owed to the USPTO, to include a Rule 11-type certification for papers filed with the PTAB with a provision for sanctions for noncompliance.
  • Page Limits. The USPTO is imposing a word count for the petition, patent owner preliminary response, patent owner response, and petitioner’s reply brief.
    • For briefs previously limited to 80 pages (e.g., PGR or CBMR petition): 18,700 words
    • For briefs previously limited to 60 pages (e.g., IPR or derivation petition): 14,000 words
    • For briefs previously limited to 25 pages (e.g., Reply): 5,600 words

      The word count or page limit does not include the table of contents, table of authorities, grounds for standing, mandatory notices, certificate of service or word count, or appendix of exhibits or claim listing.

      For all other briefing, the USPTO will maintain a page limit. Motions to amend are limited to 25 pages. All other motions are limited to 15 pages.

      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 correction. But because claim charts tend to significantly increase the overall word count of a brief, they are less likely to be used by petitioners going forward in any event.
  • Demonstratives. 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.

The Federal Register also noted that several commenters advocated improvements to PRPS, the PTAB’s website and docketing case system. Suggestions included improving PRPS to be able to search by patent owner, to be able to store more than 10 documents without degrading responsiveness, to accurately post the status of cases, and to improve the reliability of PRPS in general. The USPTO responded that it has considered the commenters’ suggestions and is working with vendors to develop a new electronic filing system with additional functionality such as searching in the case docketing system.

It is expected that the updated Trial Practice Guide reflecting these new rules will be issued soon.

For any questions on the new rules, please contact the author.