Pursuant to a recent notice of proposed rulemaking, the U.S. Patent and Trademark Office (“USPTO”) seeks to amend the rules of practice for inter partes review, post-grant review, and the transitional program for covered business method patents proceedings that implemented provisions of the Leahy- Smith America Invents Act (‘‘AIA’’) before the Patent Trial and Appeal Board (‘‘PTAB’’’).
The proposed rule changes include:
- Instituting review on all challenged claims, or none, in inter partes review (“IPR”), post-grant review (“PGR”), and the transitional program for covered business method (“CBM”) patents proceedings, in accordance with the U.S. Supreme Court’s decision in SAS Institute Inc. v. Iancu (‘‘SAS’’).
- Setting forth the briefing requirements of sur-replies to principal briefs and providing that a reply may respond to a decision on institution.
- Eliminating the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response when deciding whether to institute an IPR, PGR, or CBM review.
All-or-Nothing AIA Reviews
The SAS case held that the PTAB must either review all challenged claims in AIA review petition or review none at all. Following the SAS decision, the USPTO issued guidance that it would not pick and choose between a petitioner’s arguments in IPR, PGR, and CBM proceedings. The proposed rule change states that “[u]nder the amended rule, in all pending IPR, PGR, and CBM proceedings before the office, the board would either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.”
Patent Owner Reply Briefs
The next proposed change seeks to amend the rules of practice to set forth the briefing requirements of sur-replies to principal briefs and to provide that a reply may respond to a decision on institution in PTAB in IPR, PGR, and CBM proceedings.
The USPTO states that sur-replies may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness, and may only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross- examination testimony. A sur-reply may address the institution decision if necessary to respond to the petitioner’s reply.
Change in Testimonial Evidence Standards
In 2016, the USPTO promulgated a rule to allow new testimonial evidence to be submitted with a patent owner’s preliminary response, and amended the rules to provide a presumption in favor of the petitioner for a genuine issue of material fact created by such testimonial evidence solely for purposes of deciding whether to institute an IPR, PGR, or CBM review.
In light of stakeholder feedback received in connection with Precedential Opinion Panel (POP) review in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018–01039, Paper 15 (PTAB Apr. 3, 2019) (granting POP review), the USPTO now proposes to amend the rules of practice to eliminate the presumption in favor of the petitioner.
The USPTO explained that the presumption has created confusion. For example, it stated that “[c]ertain stakeholders have indicated that the presumption in favor of the petitioner for genuine issues of material fact created by patent owner testimonial evidence also creates a presumption in favor of the petition for questions relating to whether a document is a printed publication.”
Accordingly, pursuant to the proposed rule, any testimonial evidence (e.g., an expert declaration) submitted with a patent owner’s preliminary response (POPR) will be taken into account as part of the totality of the evidence. Patent owners may be encouraged to file expert declarations with their POPRs to support procedural arguments, e.g., whether or not a printed publication is publicly accessible, in response to such a rule change. However, Patent Owners will likely continue to delay filing expert declarations to support substantive arguments until after institution, for fear of revealing the strength (or weakness) of their case so early in the process.
The proposed rule was published in the Federal Register on May 27. The USPTO is accepting comments for 30 days following publication. We will keep you updated as to further developments regarding these proposed rule changes.