On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued another round of amendments to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the Leahy-Smith America Invents Act (AIA). The new rules will become effective May 1, 2016.

Background

In 2012, the USPTO issued rules and guidance for PTAB proceedings under the AIA. In 2014, the USPTO announced that it would be accepting comments on the proceedings and, following a short review process, issued a first set of "quick fix" rules in May 2015. The first rules package sought to provide "changes of simple scope," including increased page limits for motions to amend and reply briefs. The latest package of rule changes is more substantive and may change the effect of post-issuance proceedings on district court litigation.

Second Package of "More Involved Rule Changes"

This second rules package, initially proposed in August 2015, involves significant changes to AIA post-issuance proceedings designed to address comments provided to the USPTO following its 2014 "listening tour." Some of the rule changes are meant merely to confirm present practices of the PTAB, such as the rule changes addressing claim construction for expiring claims. Some are aimed at streamlining procedures for handling recurrent issues, such as disputes regarding real party in interest. However, others are substantive and could significantly affect the litigation strategies of the parties, particularly patent owners. Among the rule changes that appear in the present package are:

• New Testimonial Evidence with Preliminary Responses. Patent owners were previously limited to testimonial evidence (such as expert declarations) that was already in existence and not created for the purpose of the post-issuance proceeding when submitting a preliminary response prior to the institution of trial. The new rule allows patent owners to include testimonial evidence created to support 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 rule 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. While the rule change offers an opportunity for the patent owner to provide evidence that might prevent institution, it also raises expectations and the possibility for waiver. Moreover, the rule itself indicates that unless the evidence overwhelmingly supports the patent owner's position, it will not affect the decision on institution.
• Rule 11 Requirements. While ethical conduct requirements are already in place for practitioners before the PTAB, the new rule is billed as promoting a "more robust" ethical requirement meant to "police misconduct." The new rule largely tracks that of Rule 11 of the Federal Rules of Civil Procedure, including a Rule 11 style certification on all papers presented to the PTAB, with violations subject to potential sanctions. The rule does not actually change the practice so much as make the current practice explicit and spell out additional consequences for violating the practice.
• Claim Construction. The claims of a non-expired patent are construed under the broadest reasonable interpretation (BRI) standard, while expired patent claims are construed according to the Phillips standard typically used in district court. The new rule confirms that BRI will continue to apply in most circumstances, though the Phillips standard will be applied to patents that have not yet expired, but will expire prior to the issuance of a final decision in the proceeding. This change accounts for the lack of any practical opportunity to amend the patent claims in such a circumstance.
• Length Limits of Key Filings. The new rules also institute a word count, as opposed to a page limit, for major briefings (e.g., petitions and patent owner responses). For example, the page limit for inter partes review petitions was previously 60 pages of double-spaced text with single-spaced claim charts. The new rules change that limit to a straight word count of 14,000 words. The 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 arguments improperly placed in claim charts. Assuming 250 words per page, 14,000 words is roughly 56 double-spaced pages, which reflects an effective reduction in the number of pages. The focus on words, however, might permit more extensive use of charts and graphics.

Although not part of the rule change package, the USPTO promised that examples will be supplied in the near future to provide guidance for parties as to situations in which (i) live testimony will be allowed during oral argument and (ii) trials will be allowed to exceed the one-year mandate for delivery of a final written decision.