PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), post-grant review (PGR), the transitional program for Covered Business Method (CBM), and derivation proceedings. The amended rules apply to all AIA petitions filed on or after May 2nd and to all current preliminary proceedings and trials before the PTAB.

The amendments provide for substantial changes in trial procedures before the PTAB, and are likely to have a significant impact on strategic approaches for petitioners and patent holders alike. Notably, for IPR, PRG, and CBM, new testimonial evidence can now be submitted with a patent owner’s preliminary response, thus enabling patent owners to offer testimonial evidence directly responding to issues raised in the petition. Phillips-¬style claim construction proceedings are also now available by request for soon-to-expire patents, thus providing a district court-like claim construction approach for parties seeking an alternative to the broadest reasonable interpretation standard applied by the PTAB. Other changes include a new Rule 11-type certification for counsel and parties filing papers in a proceeding, which raises the prospect of sanctions motions directed at practitioners and parties for failing to meet the duty of candor owed to the USPTO, and a switch to word count limits instead of page limits for major briefing. Parties involved in proceedings before the PTAB should take note of these changes as they are now in effect.

Summary of Key Changes

1. Patent Owner Preliminary Response

The USPTO revised 37 CFR § 42.108(c) and § 208(c) to indicate that:

• The Board’s decision will take into account a patent owner’s preliminary response where such a response is filed, including any testimonial evidence.
• A genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an IPR, PGR, or CBM.
• A petitioner may seek leave to file a reply to the preliminary response before institution, but any such request must make a showing of good cause.

Unlike the old rules, patent owners can now introduce testimonial evidence, such as expert testimony, in the preliminary response. This amendment makes the initial IPR, PGR, or CBM petition process more meaningful to patent owners: with an upfront investment to develop and introduce expert testimony, a patent owner now has more ammunition to prevent IPR, PGR, or CBM proceedings in the petition stage. That said, for the purposes of the decision to institute, testimonial evidence—and in particular conflicting testimonial evidence—is still viewed by the Board in the light most favorable to the petitioner. Further, petitioners may seek leave to file a reply before institution, thus providing an opportunity to respond to new testimonial evidence raised by the patent owner. With this in mind, and given the three-month time frame for the response to a petition, patent owners should carefully consider the pros and cons of submitting testimonial evidence at this stage.

2. Claim Construction Standard

The USPTO amended 37 CFR § 42.100(b), § 200(b), and § 300(b) to add that:

• A party may request a district court-type claim construction approach to be applied if a party certifies that the involved patent will expire within 18 months from the entry of the notice of filing date accorded to petition.
• An unexpired patent means a patent “that will not expire before a final written decision is issued."

In the amended rules, the USPTO noted that parties may request the Board apply the same Phillips-style claim construction standard used by district courts for claims of a patent that will expire before the issuance of a final written decision. Such a request may be beneficial to patent owners, given that the broadest reasonable interpretation standard may increase the scope of potentially relevant prior art. The request must be made by motion under § 42.20 and is due within 30 days of the filing of the petition. 37 CFR § 42.300(b). For all other patents involved in AIA trial proceedings, the PTAB will continue to apply the broadest reasonable interpretation standard. The USPTO had commented that a party could request a Phillips construction to patents expiring before a final decision because “no opportunity to amend exists and claims should be construed to preserve validity if possible.” ¹

The broadest reasonable interpretation standard for AIA proceedings was recently affirmed in the Federal Circuit’s holding in In re Cuozzo, currently on appeal to the United States Supreme Court. In re Cuozzo Speed Techs, LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted, Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). The Supreme Court heard oral arguments on the Cuozzo appeal on April 25, 2016 and is generally expected to issue its decision prior to its summer recess

3. Rule 11-Type Certification

The USPTO amended 37 CFR § 42.11 to set forth the process and conditions under which the Board will impose sanctions if the Board determines that the duty of candor owed to the USPTO had been violated. The amended rule, by specifically incorporating the requirements of 37 CFR § 11.18, provides greater detail on the USPTO’s expectations for counsel and parties participating in post grant proceedings and also provides a procedure for sanctions motions that does not appear in the old rule.

4. Word Count

The USPTO amended 37 CFR § 42.24, § 42.107(a), and § 42.207(a) to implement a word count limitation instead of page limits for petitions, patent owner preliminary responses, patent owner responses, and petitioner’s replies:

Page limits for motions, including motions to amend, remain the same:

• Motions to amend: 25 pages (opening), 25 pages (opposition), 12 pages (replies)
• All other motions: 15 pages (opening), 15 pages (opposition), 5 pages (replies)

5. Real-Party-in-Interest

The USPTO will permit a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding.² The USPTO also noted in the Notice of Proposed Rulemaking, however, that it is important to resolve real party-in-interest and privity issues as early as possible, preferably in the preliminary stage of the proceeding prior to institution. With respect to a late change that reasonably could have been raised earlier in the proceeding, the USPTO will consider the impact of such delay on a case-by-case basis. The USPTO will add further discussion on this issue in the Patent Trial Practice Guide.

In summary, the USPTO’s amended rules for PTAB proceedings bring significant changes for parties involved in AIA trial proceedings before the PTAB. The prospect of new, early-stage testimonial evidence gives patent owners an important tool for addressing petition testimony prior to institution. And depending upon the patent claims at issue, the availability of the Phillips claim construction standard may help narrow the field of relevant prior art. Whether these changes will ultimately increase early-stage denials of institution or alter the outcome of validity findings based on how the Board construes claims remains to be seen. In the meantime, parties involved in AIA trials before the PTAB should carefully consider the applicability of these amended rules to pending and future proceedings.