On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at a tactical disadvantage. The new rules make some notable changes to some PTAB trial procedures, but not to other procedures criticized by some AIA trial participants.
The Leahy-Smith America Invents Act (AIA) created three new post-grant proceedings permitting competitors and other members of the public to challenge the validity of issued patents in trial-like administrative proceedings. One of the review procedures, Inter Partes Review (“IPR”), has proven to be unexpectedly popular with challengers, with nearly 4,200 petitions filed through the end of February 2016. In 2014, the USPTO invited feedback on improvements to the AIA trial process, including a June 2014 formal request for public input. The USPTO responded to public comments on March 27, 2015 by announcing new “quick-fix” improvements to the PTAB rules, including expanding page limits for some briefs. In addition, USPTO Director Michelle Lee announced that the USPTO was considering numerous other changes to AIA trial procedures, and invited further public comment on those proposals.
The USPTO now has had an opportunity to compile and evaluate all public comments on the proposed rules, and published final amended rules in the Federal Register. 81 Fed. Reg. 18750 (April 1, 2016).
Significant Rule Changes:
The USPTO has finalized a number of significant rule changes effective May 2, 2016 for all new proceedings commenced on or after that date, and proceedings pending on or after that date. These changes include:
- Patent Owner’s Preliminary Response. The USPTO has amended 37 C.F.R. § 42.23(b) to permit a patent owner to include testimonial evidence in a response to a petition for IPR, Post-Grant Review, or Covered Business Method review. A petitioner may seek leave to file a reply responding to the submission upon a showing of good cause. If the petition and preliminary response create a genuine issue of fact, the PTAB will view the evidence in the light most favorable to the petitioner “solely for purposes of deciding whether to institute” review. The USPTO will place “no negative inference on patent owner’s choice to forgo an opportunity to file a preliminary response, [and] no negative inference will be drawn if a patent owner decides not to present new testimonial evidence with a preliminary response.” 81 Fed. Reg. at 18755.
- “Broadest Reasonable Interpretation” Claim Construction. Prior to the current change, the AIA rules allowed use of Phillips-based claim construction analysis, rather than the USPTO’s administrative “broadest reasonable interpretation” or “BRI” claim construction, only if the AIA challenge involved an already expired patent. The USPTO now has amended the AIA trial rules to expand the use of a Phillips-based claim construction analysis to situations where a patent will expire during an AIA challenge. According to the current rule change, either party may request the Phillips-based review by filing a motion certifying that the patent will expire within the pendency of the AIA challenge. The PTAB will then schedule a conference call with both parties to determine whether a Phillips-based claim construction is appropriate. This rule change comes amidst ongoing discussions that having a BRI standard for AIA challenges and Phillips-based claim construction analysis in federal court may result in disparate claim constructions for the same patent. In response to those practitioners critical of the two standards, the USPTO maintained that a patent owner has a reasonable opportunity to amend claims in AIA trial proceedings, and as a result BRI is the appropriate claim construction standard in most trials. The Supreme Court will hear arguments on April 25 in Cuozzo Speed Techs. LLC. v. Lee, 136 S. Ct. 890 (2016), addressing the propriety of BRI review in AIA trials, and the outcome of that case may affect future PTAB claim construction practices.
- Fed. R. Civ. P. Rule 11-Type Certifications. The USPTO has amended 37 C.F.R. § 42.11 to require practitioners to include a certification consistent with Rule 11 on papers filed with the PTAB. The PTAB is authorized to impose sanctions for violation of the rule.
Changes Considered, But Not Implemented:
One notable aspect of the finalized USPTO rules is what they do not cover. In her March 27, 2015 blog post, Director Lee published a wide range of potentially significant procedural changes. For various reasons, however, the USPTO ultimately decided not to revise the rules more extensively at this time, generally preferring to allow the PTAB to consider the issues on a case-by-case basis.
- “Single-Judge Pilot Program.” The USPTO decided not to go forward with a proposed pilot program in which a single PTAB judge would determine whether to institute a trial at the petition stage of proceedings. Under the proposal, if a trial was initiated, two additional judges would be added to the panel hearing the case on the merits. The proposal was suggested to mitigate the perception that a PTAB panel that decides to institute review is predisposed to cancelling claims on the merits.
- Reform of Rules Governing Claim Amendments. After considerable discussion, the USPTO declined to revise the current procedures for amending claims during the AIA trial, despite the fact that motions to amend are rarely granted. The USPTO reiterated that the PTAB panel is not equipped to examine the patentability of proposed amended claims, and thus amended claims automatically become part of the patent under review. As a result, the current rules requiring a patent owner to demonstrate that a proposed amended claim is patentable over the prior art “account[s] for the absence of an independent examination by the Office where a prior art search is performed as would be done during prosecution of a patent application, reexamination, or reissue.” 81 Fed. Reg. at 18754.
- Expanded Availability of Discovery. The USPTO declined to modify the current relatively restrictive standard for allowing discovery. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012–00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative). The USPTO noted that requests for discovery would be considered on a case-by-case basis.
- Other Procedural Reforms. The final rules do not include new rules governing how the PTAB should process multiple proceedings involving the same patent, and the use of live testimony at trial. In both instances, the USPTO noted that PTAB panels would continue to manage those issues on a case-by-case basis.
Finally, the USPTO noted that it intends to continue to respond to public comments and modify PTAB procedures in the future. “The Office anticipates that it will continue to refine the rules governing AIA trials to continue to ensure fairness and efficiency while meeting all congressional mandates. Therefore, the Office continues to encourage comments concerning how the rules may be refined to achieve this goal.” 81 Fed. Reg. at 18751
Perhaps the most significant rule change in the USPTO’s current final rule changes is the ability of patent owners to submit testimonial evidence, such as expert declarations, in their preliminary response to a petition for AIA review. Since a significant percentage of initiated challenges result in a final decision that some or all of the challenged claims are unpatentable, the patent owner’s best opportunity for avoiding an adverse result is to avoid institution of review. The opportunity to submit testimonial evidence, particularly expert testimony, may be helpful in avoiding institution of review in some cases. Even with the possibility of submitting testimony, however, the rules require the PTAB to view factual disputes at the institution stage in a light most favorable to the petitioner. This procedural posture may result in AIA trials even if the patent owner submits testimony and other evidence to rebut the factual basis of a petition.
For more information on post-grant proceedings, visit www.bkpostgrant.com.