Proposed changes to rules

Business man shout on the building rooftopThe U.S. Patent and Trademark Office recently published a notice of proposed changes to the rules of practice before the Trademark Trial and Appeal Board (TTAB), particularly to trademark application oppositions and registration cancellation proceedings. These proposed rule revisions, the first proposed by the PTO in the past decade, could have significant impact on practice before the TTAB.  Although this Blog is dedicated to local rules at the district court level, we nonetheless thought it appropriate to address the TTAB’s proposed rule changes and remind you of the opportunity to be heard on the subject.  Public comment on these proposed changes are due by June 3, 2016, so if you have thoughts or input on the proposed rule changes, do not delay.

The proposed amendments to TTAB practice are all the more significant as they come just a year after the Supreme Court’s B&B Hardware decision, providing that TTAB findings can have preclusive effect in later federal court litigation. The PTO suggests that its proposed amendments, the highlights of which are outlined below, are intended to provide more efficiency in TTAB proceedings and to harmonize the TTAB’s rules to current practice and technological advances over the past several years.

A full copy of the PTO’s proposed rules changes can be found here. Continue Reading TTAB Proposes Sweeping Changes to Practice Rules –Time To Be Heard

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.

The United States District Court for the District of Colorado has become the second court in the Tenth Circuit and joined 31 other federal courts by implementing their own local patent rules last month. The adoption of these rules was announced on June 11, 2014 as a Pilot Program Implementing Proposed Local Patent Rules. The court announcement (.pdf) states that the local patent rules will apply to all patent cases filed in the District of Colorado on or after August 1, 2014, so the rules were adopted in time for the official opening of the Regional Patent Office in Denver. The District of Colorado’s Local Patent Rules (.pdf) are similar to those of other jurisdictions, but contain some key idiosyncrasies. Like most other jurisdictions, prior to commencement of a case, the parties are required to propose a Patent Scheduling Order that sets forth deadlines for each of the filings required by the rules. (Colo. LPR 2) Also, “a party claiming patent infringement shall serve Infringement Contentions identifying with specificity each accused product or process (the “Accused Instrumentality”).” (Colo. LPR  4(a))  The following features of the Court’s new Local Patent Rules differentiate them from those of other jurisdictions:

  • Claim Charts: Parties who serve Infringement Contentions must also serve a claim chart for each Accused Instrumentality, but “if two or more Accused Instrumentalities have the same relevant characteristics, they may be grouped together in one claim chart.” (Colo. LPR  4)
  • Response to Infringement Contentions: A party opposing an infringement claim is required to serve a Response to Infringement Contentions identifying the limitations of each asserted claim alleged not to be present in the Accused Instrumentality. (Colo.LPR  6).
  • Response to Invalidity Contentions: if Invalidity Contentions are filed, a party claiming infringement is required to serve a Response to Invalidity Contentions. (Colo. LPR  10).
  • Claim Construction Briefs: Claim construction briefs have a word limit of 10,000 words. (Colo. LPR  17(a))  If a party files both a supporting brief and a reply brief,” the two briefs together shall not exceed 10,000 words.” (Colo. LPR  17(b)).

  Key Takeaway: The new local patent rules for the District court of Colorado are designed to bring uniformity and efficiency to patent litigation. Practitioners will be expected to work cooperatively to develop a cost effective pretrial discovery schedule and clearly respond to the other party’s contentions. The editor thanks Bill Johnson, a law student at the University of Chicago, for his assistance in writing this post.

Following the lead of the U.S. District Court for the District of New Jersey, the U.S. District Court for the Eastern District of Texas just announced the adoption of a General Order amending the disclosure requirements for cases under the Hatch-Waxman Act, 21 U.S.C. § 355.  The new rule takes effect after a notice and comment period ending on April 1, 2014.   Similar to local patent rule 3.6(j) from the District of New Jersey, the new Eastern District of Texas local patent rule 3-8(e) requires the following:

“(e) Each party that has an ANDA application pending with the Food and Drug Administration (“FDA”) that is the basis of the pending case shall: (1) notify the FDA of any and all motions for injunctive relief no later than three business days after the date on which such a motion is filed; and

(2) provide a copy of all correspondence between itself and the FDA pertaining to the ANDA application to each party asserting infringement, or set forth the basis of any claim of privilege for such correspondence, no later than seven days after the date it sends or receives any such correspondence.”

The stated purposes of the new rule are to help ensure coordination between related FDA proceedings and district court litigation, and also avoid a recurring discovery issue regarding the production of correspondence to and from the FDA both prior to and during litigation.   The District of Idaho also has a local patent rule for Hatch-Waxman cases, but has not yet adopted this specific disclosure rule.  It will be interesting to see if more District Courts also adopt this new local patent rule.

Following up on my earlier post dated December 28, 2012, the proposed local patent rules at the United States District Courts for the Eastern and Southern Districts of New York are now in effect as of April 8, 2013.  The local patent rules for the Eastern District of New York (.pdf) and the Southern District of New York (.pdf) are much less detailed than local patent rules adopted by other courts.  For example, the Eastern and Southern Districts of New York only require the following for infringement contentions, “… a party claiming patent infringement must serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions,’ which identifies for each opposing party, each claim of each patent-in-suit that is allegedly infringed and each product or process of each opposing party of which the party claiming infringement is aware that allegedly infringes each identified claim.”  (L.P.R. 6)  This minimal disclosure stands in stark contrast to other courts such as the Northern District of California which require much more detail for infringement contentions.

Following a trend sweeping over the federal court system, the United States District Courts for the Eastern and Southern Districts of New York became the latest courts to adopt their own version of local patent rules this month.  The Eastern and Southern Districts of New York jointly announced the adoption of their own patent rules on December 18, 2012.  The Court announcement (.pdf) states that interested parties may submit their comments to the proposed rules by January 11, 2013.  The new rules become effective upon approval by the Second Circuit Judicial Council. The proposed local patent rules (.pdf) are much less detailed than local patent rules adopted by other courts.  For example, the Eastern and Southern Districts of New York only require the following for infringement contentions, “… a party claiming patent infringement must serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions,’ which identifies for each opposing party, each claim of each patent-in-suit that is allegedly infringed and each product or process of each opposing party of which the party claiming infringement is aware that allegedly infringes each identified claim.”  (L.P.R. 6)  This minimal disclosure stands in stark contrast to other courts such as the Northern District of California which require much more detail for infringement contentions.   Specifically, the Northern District of California require that “a party claiming patent infringement shall serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.’  Separately for each opposing party, the ‘Disclosure of Asserted Claims and Infringement Contentions’ shall contain the following information: (a)  Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. §271 asserted; (b)  Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware.  This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known.  Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process; (c)  A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function. (d)  For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.  Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described. (e)  Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality; (f)  For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and (g)  If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim. (h)  If a party claiming patent infringement alleges willful infringement, the basis for such allegation.” (N.D.Cal. L.P.R. 3-1) Key Takeaway:  While the District Courts for the Eastern and Southern Districts of New York have adopted new local patent rules, practitioners in those districts should not expect to receive detailed infringement or invalidity contentions disclosed in response to those new local patent rules.

On October 2, 2012, Chief Judge Holderman of the United States District Court for the Northern District of Illinois published the Court’s proposal to amend its local patent rules.  Public comments to the proposed rules are due December 3, 2012 and may be emailed to ilnd_localrules_comments@ilnd.uscourts.gov.   The purpose of this post is to highlight some of the most significant changes proposed by the Court.

The proposal includes the following changes:

1.  In its comments section to the LPR 1.3, the Court adds that it does not intend that discovery shall automatically resume as a matter of right after a claim construction ruling.  Instead, the parties seeking further discovery following the claim construction ruling shall submit a motion explaining why further discovery is necessitated. 

2.  Final Invalidity Contentions may rely on more than twenty-five prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.  See, LPR 3.1.

3.  A motion to amend final contentions must be filed, with proposed amendments, within fourteen days after entry of the claim construction ruling.  See, LPR 3.4.

4.  The Local Patent Rules will now include several rules relating to Electronically Stored Information (“ESI”).  Among others, the new ESI rules contain the following significant provisions:

a.  The mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.  See, LPR ESI 1.4.

b.  Prior to presentment of an ESI dispute to the Court, each party shall designate an individual as an e-discovery liason who must participate in the meet and confer to resolve the dispute.  See, LPR ESI 2.1.

c.  The following categories of ESI generally are not discoverable:

(i)  deleted, slack, fragmented or unallocated data on hard drives;

(ii)  random access memory (RAM) or other ephemeral data;

(iii) on-line access data such as temporary internet files, history, cache, cookies, etc.; 

(iv) data in metada fields that are frequently updated automatically, such as last-opened dates; 

(v) backup data that is substantially duplicative of data that is more accessible elsewhere, and; 

(vi) other forms of ESI whose preservation requires extraordinary affirmative measures that are not utilized in the ordinary course of business.  See, LPR ESI 2.3(d).

5.  General ESI production requests shall not include email.  To obtain emails, parties must propound specific email production requests.  See, LPR ESI 2.6.

6.  Email production requests shall identify the custodian, search terms, and time frame.  Each requesting party shall limit its email production requests to a total of five custodians per producing party.  Each requesting party shall limit its email production to a total of five search terms per custodian per party.  See, LPR ESI 2.6.