May 27, 2020

U.S. Patent Trial and Appeal Board Proposes Rule Changes

The U.S. Patent and Trademark Office (USPTO) has proposed amendments to several rules governing proceedings before the Patent Trial and Appeal Board (PTAB). The proposed rule changes published today in the Federal Register, available here, address the three issues summarized below.

Conforming PTAB Rules to SAS Institute Inc. v. Iancu

The proposed change implements the Supreme Court’s holding that when instituting a petition, the PTAB must institute on all asserted grounds and with respect to all challenged claims.

Scope of Reply and Sur-Reply Briefs

The proposed changes provide that Patent Owner’s Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply may respond to the institution decision, in addition to the arguments in the opposing party’s papers. The proposed changes also conform to the current standard practice of allowing patent owners to file a sur-reply after institution and limit that sur-reply to 5,600 words.

Elimination of Presumption Regarding Testimonial Evidence

The proposed change eliminates the presumption in favor of the petitioner for genuine issues of material fact created by testimonial evidence submitted with patent owner’s preliminary response. Instead, the Board will consider the totality of the evidence to determine whether the relevant standard for institution has been met.

The USPTO has invited comment on the substance of these proposals, as well as on the implementation of the changes. For example, the notice asks whether these changes should be applied to all pending IPR, PGR, and CBM proceedings in which a patent owner’s preliminary response is filed on or after the effective date. The period for comment is open and any comments must be submitted by June 26, 2020. For additional information, please reach out to Linnea Cipriano or Emily Rapalino.