The USPTO has now issued a new set of rules for practice before the PTAB. The new rules, which constitute a finalized version of an earlier proposal made available for public commentary in August of 2016, amend the existing trial practice rules in place for  IPR, PGR, and CBM proceedings.  Under the new rules:

• a patent owner will be allowed to submit testimonial evidence, such as expert declarations, in its patent owner preliminary response, although “if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of petitioner solely for institution purposes, so that petitioner will have an opportunity to cross-examine the declarant during the trial;”
• certain papers filed in a proceeding will require a Rule 11-type certification, and attorneys may be sanctioned for violations such as failing to conducti an adequate investigation prior to filing the petition;
• the Board will continue to use the broadest reasonable interpretation (BRI) claim construction standard, except that in cases where the claims of the challenged patent will expire before the final written decision, the Board will use the Phillips-type district court standard; and
• major briefings, including the petition, patent owner preliminary response, patent owner response, and petitioner’s reply brief, will now be subject to word count limits rather than the current page limits.

The USPTO declined to institute a pilot program that had been proposed under which a single judge, rather than the three-judge panel, would decide whether to institute certain proceedings.

According to the USPTO, it “will amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.”

The new rules are set to take effect in 30 days, i.e., on May 2, 2016.  The corresponding Federal Register Notice can be found at https://www.federalregister.gov/articles/2016/04/01/2016-07381/amendments-to-the-rules-of-practice-for-trials-before-the-patent-trial-and-appeal-board.

Takeaway: Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R.§ 42.23(b) is an issue for the Board to determine.

In its Order, the Board authorized Patent Owner to file an exhibit containing the transcript of the Markman hearing that took place in a related litigation. However, the Board did not authorize Patent Owner to file any evidence other than this transcript. Petitioner was authorized to submit any objections that it had to Patent Owner’s filing.

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Takeaway: Petitioner may not rely solely on a presumption of inherency, as that would improperly shift the burden to a patent owner to establish that the claimed properties are not necessarily present in the prior art.

In its Final Written Decision, the Board found Petitioner had not shown by a preponderance of the evidence that challenged claims 1-22 of the ‘639 patent are unpatentable under 35 U.S.C. § 103(a). The ‘639 patent “is directed to lightweight fabrics that provide protection from heat, flame, and electrical arc.” Continue reading →

Takeaway:  An unauthorized request for documents exceeding an order by the Board may be treated by the Board as a new motion for additional discovery subject to the modified Garmin factors.

In its Decision, the Board authorized Petitioner to file a Motion to Apply for a Subpoena under 35 U.S.C. § 24 to Compel the Testimony of Mr. Jonathan C. Wheeler pursuant to 37 C.F.R. § 42.52(a).  Patent Owner had not opposed this Motion; instead, it had requested various limitations on the scope and logistics of the sought-after testimony.

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Takeaway: The Board denied institution finding that the Petition raised “the same or substantially the same prior art or arguments” because the new ground merely added additional prior art to the originally asserted ground of unpatentability without substantively changing the basis for the alleged unpatentability.

In its Decision, the Board denied institution of inter partes review of the challenged claims 2-4 of the ’991 patent. The ’991 patent generally relates to devices and methods for repairing the juncture between a main pipeline and a lateral pipeline in an underground sewer pipe. Continue reading →

On August 19, 2015, the U.S. Patent and Trademark Office announced Proposed Rules Changes that have been published in the Federal Register. The Proposed Rules discussed practical changes to PTAB trials that were made in response to comments received during the Office’s nationwide listening tour in April and May of 2014. Continue reading →