The U.S. Patent and Trademark Office (“PTO”) this week published its highly anticipated Notice of Amendments to the Rules of Practice for Trials before the Patent Trial and Appeal Board (“PTAB”). 81 FR 18750. Although directed solely to proceedings before the PTAB, we thought the rules changes worthy of mention in this blog. The amendments take effect May 2, 2106, and will apply to all AIA petitions filed on or thereafter. However, the amended rules also apply to “any ongoing AIA preliminary proceeding or trial” currently before the Office, meaning that each of the amended rules will apply to any filing in a pending PTAB matter on or after May 2. Below we have identified some of the more significant aspects of the rules amendments. Practitioners should take note of how these amendments will begin impacting their pending PTAB cases in less than a month.
Briefs Move to Word Count Instead of Page Limit
In a move that should benefit both the parties and the PTAB, the amended rules change many of the limitations for paper submission in AIA proceedings from a page count to a word count. Under the amended rules inter partes petitions and responses may now be 14,000 words rather than the previous 60 pages. Post-grant review petitions and responses may contain 18,700 words (instead of 80 pages) and replies may be as many as 5,600 words instead of 25 pages. The amended rule also excludes from the word count the grounds for standing and mandatory notices under 37 CFR 42.8. Briefs for other motions, however, remain governed by page limit.
The PTO believes this change will allow for administrative efficiencies, particularly because use of word count will no longer necessitate administrative review to determine whether claims charts improperly contain argument. This change should also promote better advocacy as it will allow parties to make more use of figures and provide more flexibility to petitioners and patentees in how they want to brief their claims.
Patentee Testimony Allowed at Preliminary Stage
In keeping with an issue raised in its initial notice, the amended rules now allow a patentee to file testimonial evidence with its preliminary response. An important caveat, however, is that even where the patentee has done so, the PTAB will institute the proceeding if there is any factual conflict between the patentee’s testimony and the petition. The PTO believes that this move will ensure that the petitioner has the opportunity to cross-examine the patentee’s declarant at trial.
Option to Argue For a Phillips Claim Construction
Under the new rules, the PTAB will continue to use the “broadest reasonable interpretation” standard when construing patent claims. However, in response to comments from stakeholders, the PTO has enacted amendments allowing either party to file a motion requesting use of the standard used during district court claim construction in cases where the patent is set to expire during the pendency of the AIA review. This revision may be much ado about nothing, however, given the Supreme Court’s grant of certiorari in Cuozzo to determine whether the PTAB may construe claims of an issued patent based on their broadest reasonable interpretation rather than according to their plain and ordinary meaning.
Practitioners Bound to Rule 11-Type Certifications
Finally, the PTO’s amendments also touch on the duty of candor under 37 C.F.R. 42.11. The amended rules implement Rule-11 type certification for any papers filed with the PTAB and outline procedures for imposing sanctions aimed at giving the PTO more robust means for policing misconduct. Akin to Rule 11’s safe-harbor provision, the amended rule also allows a party 21 days to cure an alleged violation after it is served with a proposed motion for sanctions. The Office sees these amendments as preventative and deterrent by design, yet nevertheless necessary to provide greater detail on the expectations of PTAB practitioners and parties.
It remains to be seen how the new PTO rules amendments will play out in AIA review proceedings before the PTAB. Nonetheless, the new PTO rules should inch PTAB proceedings one step closer to the type of proceeding practitioners have come to expect in federal district court patent litigation. We will continue to monitor developments in this area and keep you up to date on any future amendments or PTAB rulings interpreting the amended rules. For more immediate information on this topic, please contact Mike Annis or Andy Gilfoil.