USPTO Proposes New PTAB Trial Rules

By Bernard Knight, McDermott Will & Emery LLP

This week the United States Patent and Trademark Office (USPTO) published a proposed rule to amend the existing rules of practice for inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (AIA).

The proposed rule seeks public comment on the proposed changes, and the USPTO will issue a final rule implementing these changes—or some version of them—at a later date yet to be determined. The proposed rule also states that the USPTO intends to later amend its Office Patent Trial Practice Guide concerning how the Office handles additional discovery, live testimony and confidential information.

Earlier this year, on May 19, 2015, the USPTO published a final rule  addressing certain ministerial changes, including an allowance for 10 additional pages for a patent owner’s motion to amend and providing 10 additional pages for a petitioner’s reply brief.

These additional proposed rules are the result of a request for comments published in June of 2014. See Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 79FR 36474 (June 27, 2014). The request for comments asked 17 questions on 10 broad topics: (1) claim construction standard; (2) a patent owner’s motions to amend; (3) a patent owner’s preliminary response; (4) additional discovery; (5) obviousness; (6) real party in interest; (7) multiple proceedings; (8) extension of one year period to issue a final determination; (9) oral hearing; and (10) general topics. See 79 FR at 36476.

The new proposed rules propose to make only a few changes to the existing rules and are not as sweeping as some had hoped. Here are the major changes:

• Allows the patent owner to submit new testimonial evidence in support of the preliminary response. This change creates some new strategic considerations for the patent owner as it may not always be advantageous to submit an expert declaration with the preliminary response. It may be more strategic to wait and see the institution decision by the Patent Trial and Appeal Board (the Board) before the patent owner locks in its witness’ testimony. This allows the patent owner to craft their post-institution case based on the Board’s concerns. It also preserves some new evidence for the post-institution trial. If the same three judges are looking at the exact same evidence and arguments pre- and post-institution, it is difficult to see what will change their minds in the trial phase regarding the patentability of the claims.
• The USPTO maintains the broadest reasonable interpretation claim construction standard, unless the patent will expire before the final written decision is issued. The USPTO has the authority to make changes to the current claim construction standard by regulation and adopt the district court claim construction standard as some have advocated and as proposed by the current versions of proposed patent reform legislation. This indicates that the Office is not supporting the legislative proposals to change the claim construction standard for post-grant proceedings. The proposed rule also clarifies the claim construction standard for a patent that will expire during the course of a proceeding and, thus, cannot be amended.
• Expressly provides that a petitioner may seek leave to file a reply to the patent owner preliminary response and that material facts that are disputed will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute the proceeding.
• Reinforces the duty of candor in PTAB proceedings and provides that the signature on any document filed with the office is a representation, among others, that the action is not being conducted “for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of the proceeding.” It is unclear what an “improper purpose” encompasses and whether it would prohibit using the post-grant proceedings as a means to affect the stock price of the patent owner for investment purposes. This is a catch-all provision that could be used by the PTAB in a variety of contexts. The proposed rule also provides new procedural rules for sanction motions, including allowing the other party to first correct the challenged document.
• Changes many of the page limits to word counts. For example a petition for inter partesreview is limited to 14,000 words.
• Demonstrative exhibits must be served at least seven business days before oral argument and filed no later than the time of the oral argument.

Bernard J. Knight, Jr., a former general counsel at the US Patent and Trademark Office, is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, DC, office. He focuses his practice on complex patent litigation. His bio is available here.