On March 31, 2016, the U.S. Patent and Trademark Office announced the final rule amending the rules of practice for trial proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes review, post-grant review, covered business method review and derivation proceedings under the America Invents Act. The amendments follow a set of “quick-fix” rule changes instituted in May 2015 and a notice requesting public comment on proposed additional rule changes issued in August 2015.
The final rule largely tracks the amendments proposed in August 2015. Key features of the amendments include:
- Claim Construction: The PTAB will continue to apply the broadest reasonable interpretation standard in most proceedings. But the new rules create a procedure for either party in a proceeding to request—by motion—application of the district court Phillips standard if the subject patent will expire within 18 months after filing of the petition.
- New Testimonial Evidence in the Patent Owner’s Preliminary Response: The amended rules allow patent owners to submit new testimonial evidence with the preliminary response before institution. Previously, no new testimonial evidence was allowed in the preliminary response. The Office made clear, however, that when such evidence creates a factual dispute, the issue will be resolved in favor of the petitioner for purposes of the institution decision. Although the Board considered imposing a limitation on the number of declarations accompanying the preliminary response, no such limitation was imposed.
- Sanctions: The new rules substantially amend 37 C.F.R. § 42.11 to require a certification of diligence before any PTAB filing, similar to that required under Rule 11 of the Federal Rules of Civil Procedure. The Office indicated that, while sanctions are expected to be uncommon, the deterrent effect of having such remedial measures available will benefit the trial process. The rules also create a procedure for parties faced with a potential sanctions motion to cure the alleged violation.
- Word Counts Replace Page Counts: The new rules will subject petitions, preliminary responses, patent owner responses and petitioner replies to predefined word limits rather the previously used page limits. Page limits will remain in use, however, for all other briefings. The new rules also identify several administrative portions of briefs that will not count against the new word limits, such as grounds for standing and mandatory notices. As a result of the new rule, parties will have greater flexibility in organizing their filings. For example, claim charts in petitions will no longer be reviewed to determine whether they contain argument.
- Single-Judge Institution Decisions: In view of predominantly negative comments from the public, the Office declined to pursue a previously proposed pilot program in which institution decisions would have been made by a single PTAB judge, with subsequent adjudication by a traditional three-judge panel in instituted cases.
In addition, the Office also indicated that additional guidance on the newly amended rules and other issues of practice before the PTAB—such as motions to amend, motions for additional discovery, real-party-in-interest determinations and coordination of multiple related proceedings—will be provided in a forthcoming update to the Office Patent Trial Practice Guide.
The Director’s announcement summarizing the new rules package and the official Federal Register notice are available online. The new rules will take effect on May 2, 2016, and will apply to all preliminary and trial proceedings pending on or after that date.