On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) announced another set of proposed changes to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the America Invents Act (AIA). Appearing in a blog post on the USPTO website,¹ USPTO Director Michelle K. Lee presented "a second package of more involved proposed rules," as well as statistics highlighting some of the data gathered over the past three years on the post-issuance review proceedings. Notice of the proposed rules was published in the Federal Register on August 20, 2015.²

Background

In 2012, the USPTO issued rules and guidance for post-issuance review proceedings under the Leahy-Smith America Invents Act of 2011. In 2014, the USPTO announced that they would be accepting comments on the proceedings, and following a short review process, issued a first set of "quick fix" rules in March 2015. The first rules package sought to provide "changes of simple scope" including increased page limits for motions to amend and reply briefs.³

Second Package of "More Involved Proposed Rules"

The second proposed rules package involves significant changes to AIA post-issuance proceedings designed to address comments provided to the USPTO since the 2014 "listening tour." Director Lee highlighted that this set of proposed rules would be the subject of discussion at "further public roadshows later this month" to garner additional public commentary on the proposed rule changes. Among the proposed rule changes that appear in the present package are:

• New Testimonial Evidence with Preliminary Responses. Currently, the testimonial evidence (such as expert declarations) that a patent owner may submit with a preliminary response prior to the institution of trial is limited to testimonial evidence that already exists and was not created for the purpose of the post-issuance proceeding. For example, a patent owner may submit declarations from a parallel litigation or the original prosecution of the patent in question. The proposed change would allow patent owners to include new testimonial evidence with their preliminary response. The rule change is meant to address concerns that a patent owner currently has no means to rebut testimonial evidence provided by the petitioner prior to institution of trial. Along with this change, the proposal further provides that any material factual disputes created by the submission of new testimonial evidence should be resolved in favor of the petitioner when determining whether trial should be instituted. It also provides that a petitioner reply may be appropriate in certain circumstances when new testimonial evidence is submitted.
• Rule 11 Requirements. While ethical conduct requirements are already in place for practitioners before the PTAB, the new package promotes a "more robust" ethical requirement meant to "police misconduct." The proposed changes are largely cribbed from Rule 11 of the Federal Rules of Civil Procedure, including a Rule 11 style certification on all papers presented to the PTAB, with violations being subject to potential sanctions.
• Claim Construction. Currently the claims of a non-expired patent are construed under the broadest reasonable interpretation (BRI) standard, while expired patent claims are subject to the same Phillips standard typically used in district court. While confirming the continued use of BRI, the USPTO has proposed expanding the use of the Phillips standard to patents that have not yet expired, but will expire prior to the issuance of a final decision in the proceeding. This change is proposed to account for the lack of any practical opportunity to amend the patent claims in such a circumstance.
• Length Limits of Key Filings. Although not mentioned in Director Lee's posting, the USPTO has also proposed moving from a page limit to a word count for major briefing (e.g., petitions and patent owner responses). For example, the page limit for inter partes review petitions is currently 60 pages of double-spaced text with single-spaced claim charts. The proposed rules would change that limit to a straight word count of 14,000 words. The proposed change is said to allow parties to present arguments in whatever manner they deem is most effective, while providing administrative efficiencies to the PTAB which will no longer have to police argument being improperly placed in claim charts. Assuming 250 words per page, 14,000 words is roughly 56 double-spaced pages.

While not proposing any rule changes, the Federal Register Notice also addresses comments related to other areas of interest, generally confirming the PTAB's practices in those areas as developed through its recent decisions. Such topics include the handling of related proceedings, real party in interest challenges, replies in the pre-institution phase, requests for additional discovery, motions to amend, potential sur-replies, and the conduct of oral hearings.

The USPTO is accepting public comment on the second package of proposed rule changes until October 19, 2015, and will be conducting additional "road shows" to gather additional feedback through the end of August.

Future Rule Changes

When the first set of "quick fix" rule changes was announced in March, it was also announced that there were expected to be three rounds of proposed rule changes. It appears, however, that generally all of the issues set to be addressed were touched on in this second package of rule changes. Considering the proposed rule changes set forth, any third rule package may be expected to contain a far less extensive set of proposed changes.

Director Lee did again mention that the USPTO is considering single-judge institution decisions. Currently, the same three-judge panel issues an institution decision and any final written decision. Under a proposed pilot program, a single judge would decide whether to institute trial, and two new judges would be added to the panel if trial is instituted. The USPTO is considering issuing a request for comments on the proposed pilot program, as well as any other suggestions relating to the staffing of PTAB panels during the institution phase of proceedings, citing the continuing increase in the number of petitions filed.

¹ Available at http://www.uspto.gov/blog/director/entry/ptab_update_proposed_changes_to.