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.
The first proposed change to the Rules relates to the claim construction standard. Currently, the Board uses the broadest reasonable interpretation standard for any decisions prior to the expiration of the patent, even if the patent is set to expire prior to the issuance of a final written decision. The Proposed Rules require the Board to employ the Phillips standard in all decisions in a proceeding, including those that occur prior to expiration of the patent, if the patent will likely expire before a final written decision is issued.
The next substantive proposed change is regarding the evidence that a patent owner may submit with its preliminary response. Currently, a patent owner cannot submit any new testimonial evidence with its preliminary response. The Proposed Rules allow patent owners to submit new testimonial evidence with its preliminary response. However, in order to allow the Board to rule on institution within three months of receiving the patent owner response, the petitioner will not have an opportunity to cross-examine any declarants until after institution. Therefore, the Board will resolve any material factual dispute in the favor of the petitioner for the purposes of making a determination on institution. Further, although a reply will not be available as of right, a petitioner may request permission to file a reply brief to address a patent owner’s new testimonial evidence.
The Proposed Rules also change the limitations on the petition, preliminary response, patent owner response, and petitioner’s reply brief. Instead of being page limitations, they will be word count limitations. Petitions for requesting inter partes review or a derivation proceeding, and the responses thereto, are limited to 14,000 words instead of 60 pages. Petitions requesting post-grant review or covered business method patent review, and the responses thereto, are limited to 18,700 pages instead of 80 pages. Replies to a patent owner response are limited to 5,600 words rather than 25 pages. The Board noted that changing the limitations to word counts will allow the Board to avoid administrative issues, such as determining whether claim charts include argument.
The Proposed Rules also include new language that parallels the Rule 11 Certification in the Federal Rules of Civil Procedure. Therefore, when signing any paper presented to the Board, the person signing is representing that it is not being presented for an improper purpose and that it is not frivolous. The Board can impose sanctions for violations of this rule.
The Proposed Rules also clarify that a patent owner can raise a challenge regarding a real party-in-interest at any time during the proceedings, however, if the challenge is made late in the proceedings and could have been made earlier, the Board may take that into account regarding whether the petition must be dismissed.
The Proposed Rules regarding oral hearings are the same as the current Rules, including discretion regarding when to allow live testimony, but the Proposed Rules allow for exchange of demonstratives seven business days prior to the hearing.
The Office also requested further comment regarding the handling of depositions, and specifically whether there should be less lead time for filing a notice of deposition.
The Office further stated that there were certain areas regarding which it had received comments, but that it would not be proposing any rule changes at this time. The Office noted that its categorization of the decision in Idle Free System, Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2003) (Paper 26) as informative was enough to address any issues with the motion to amend process. The Office stated that it believes that the Garmin factor analysis for additional discovery has been successful and allows for a determination on a case-by-case basis of whether discovery is necessary. There will be no changes to the rules regarding consolidation of or stays of proceedings. There will be no change to the rules as to when “good cause” exists for a proceeding to extend past the one-year limit for decision, but the Practice Guide will be amended to provide clarification.
In a blog post accompanying the announcement of the Proposed Rules, Director of the USPTO Michelle K. Lee noted some statistics. As of July 31, 2015, the PTAB has received a total of 3,6555 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs. Trials have been instituted in 1,389 IPRs, 185 CBMs, and 2 PGRs. Of the first IPRs to reach a conclusion, 25% of claims actually challenged (4,496 of 17,675) were found unpatentable.
Comments to the proposed rules are due on or before October 19, 2015. The Office will have a Road Show Series in August 2015 to discuss the proposed rules, which will be held on August 24, 2015 in Santa Clara, California, August 26, 2015 in Dallas, Texas, and August 28, 2015 in Alexandria, Virginia.