Responding to feedback from petitioners and patent owners, the USPTO disclosed a plan to revise the procedural rules governing post grant proceedings under the Leahy-Smith America Invents Act (“AIA”). USPTO Director Michelle K. Lee announced that although most modifications are still under consideration and will be implemented only after formal publication of proposed revised rules and a public comment period, the USPTO Patent Trial and Appeal Board (“PTAB”) will increase the page limits for some filings effective immediately.
The AIA created three new post-grant review proceedings that allow members of the public to challenge the validity of issued patents in trial-like proceedings. One of the review procedures, Inter Partes Review (“IPR”), has proven to be unexpectedly popular with challengers, with over 2,600 petitions filed through March 19, 2015. In response to the USPTO’s June, 2014 request for public input, attorneys representing both petitioners and patent owners provided comments on ways to improve the proceedings. Director Lee responded to those comments in a March 27, 2015 USPTO blog posting by announcing new “quick-fix” improvements to the PTAB rules.
Page Limits Increased Effective Immediately. Effective immediately, the PTAB will increase the allowed page limits for two important submissions:
- The page limit for petitioner reply briefs will be increased to 25 pages. (The current rules limit petitioner reply briefs to 15 pages).
- Briefs in support a patent owner’s motion to amend claims will be expanded to 25 pages, plus a claims appendix, with a “commensurate amount of additional pages” for the petitioner’s opposition to the motion to amend and the patent owner’s reply. (The current rules limit motions and opposition to 15 pages and limit replies to five pages).
Although formal modification of the page limits will require administrative rulemaking, Director Lee announced that PTAB “judges will begin implementing them through scheduling orders effective immediately.”
Additional Possible Modifications. In addition to the revised page limits, Director Lee announced that the USPTO is considering numerous other changes to the PTAB AIA trial procedures. Although the final form of these modifications is still under discussion, potential changes include:
- A “single-judge pilot program” in which a single judge would determine whether to institute a trial. If a trial is initiated, two additional judges would be added to the panel hearing the case on the merits;
- A significant amendment to rules governing motions to amend claims, which could “emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be ‘entered’), and for the amendment to result in the issuance (‘patenting’) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office”;
- Amended rules governing the evidence that a patent owner could offer in its preliminary response;
- Adjustments to the scope of permitted additional discovery;
- A revised rule clarifying the claim construction standard to be applied to proceedings involving on expired patents;
- Rules to clarify how the PTAB will process multiple proceedings involving the same patent;
- Rule amendments concerning the use of live testimony at trial. In addition, the PTAB Trial Practice Guide may be revised to promote the use of live testimony at oral hearings, when appropriate;
- A potential rule requiring a Fed. R. Civ. P. Rule 11-type certification for filings; and
- Revised Trial Practice Guide guidelines to ensure that sufficient discovery is available for parties challenging petitions based on the absence of the real party in interest.
The modified page limits and other potential rule changes are a reminder of the changing landscape in this area, which will be impacted not only by the U.S. Patent and Trademark Office’s updates, but also the Federal Circuit and possibly further Congressional reform. As the USPTO continues to fine-tune the procedures governing PTAB trials, it likely will attempt to balance relaxed restrictions with the goal of providing a streamlined, focused forum for validity challenges. As Director Lee observed in her blog post, the USPTO is “committed to fulfilling our Congressional mandate to provide a quick, inexpensive alternative to district court litigation and improve patent quality and to ensuring that the AIA trials are as effective and fair as possible.”