The new rules, which go into effect on May 2, 2016, will impact strategies for petitioners and patent owners alike.

On April 1, the US Patent and Trademark Office (Office) published a set of new rules for post-grant proceedings conducted by the Patent Trial and Appeal Board (PTAB or Board), which include inter partes review, post-grant review, covered business method review, and derivation proceedings.

The new rules largely track the Office’s proposed rules from August 2015 and address, among other things, the claim construction standard for PTAB trials, testimonial evidence submitted with a patent owner’s preliminary response, Rule 11-type certification for practitioners, and word count limitations for major briefing. These rule changes will take effect on May 2, 2016 and apply to “all AIA petitions filed on or after the effective date and to any ongoing preliminary proceeding or trial before the Office.”

OVERVIEW OF NEW RULE CHANGES

• Parties May Request a Phillips-Type Claim Construction Standard for Patents That “Will Expire” During Proceedings. For patents that will expire within 18 months of the Notice of Filing Date Accorded to Petition, the new rules allow either party to request, by a motion filed no later than 30 days from the filing of the petition, that the Board give the challenged claims a “Phillips-type construction” rather than the broadest reasonable construction normally used in post-grant proceedings. Filing the motion triggers a conference call with the Board to discuss (1) whether such a motion is appropriate under the circumstances, and (2) whether any other briefing is necessary for each party to adequately address the appropriate claim construction standard. As a result, a petitioner may be afforded an opportunity to address a Phillips-type construction before the patent owner is required to file its preliminary response.

• Patent Owner May Submit Testimonial Evidence With Preliminary Response. The new rules allow a patent owner to file with its preliminary response new testimonial evidence (e.g., expert declaration testimony) without any limit on scope. There is no limit on the number of declarations that may be submitted. But since the expedited nature of post-grant proceeding prohibit cross-examination of a declarant before institution as of right, the rules add a caveat: any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner. That being said, the Board may, in some circumstances, exercise its discretion to order limited discovery, including cross-examination of a witness before institution. And where good cause is shown, the Board may afford petitioners the right to reply.

• Parties Must Include a Rule 11-Type Certification With All Filed Papers. In addition to an existing rule (37 C.F.R. § 42.12) that provides sanctions for “advancing a misleading or frivolous argument or request for relief,” the new rules require practitioners to include a Rule 11-type certification for all papers filed with the Board with a provision for sanctions for noncompliance.

• Patent Owner May Raise a Real Party-in-Interest or Privity Challenge Any Time During the Proceeding. The new rules permit a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding. But where a late challenge could have been raised earlier in the proceeding, the Board will consider the impact of such a delay on a case-by-case basis, including whether the delay is unwarranted or prejudicial.

• Patent Owner Must Argue Over the Prior Art of Record in Motion to Amend. Where a patent owner files a motion to amend, the new rules require that the patent owner argue for the patentability of the proposed amended claims over the prior art of record, which includes (a) any material art in the prosecution history of the patent; (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and (c) any material art of record in any other proceeding before the Office involving the patent. The patent owner must still distinguish over any art provided in light of the patent owner's duty of candor as well as any other prior art or arguments supplied by the petitioner.

• Parties May Request to Present Live Testimony in an Oral Hearing. The new rules permit the Board to continue its present practice of considering requests to present live testimony at an oral hearing on a case-by-case basis, but note that such live testimony will not be required in every case where there is conflicting testimony. The Board will permit live testimony where it believes live testimony will be helpful in making a determination.

• Page Limits Replaced With Word Limits For Major Briefing. The new rules replace page limits with word count limitations for petitions, patent owner preliminary responses, patent owner responses, and petitioner replies. For all other briefing, the new rules maintain a page limit. The word count or page limit does not include the table of contents, table of authorities, claim listing, grounds for standing, mandatory notices, certificate of service, or appendix of exhibits.

CONCLUSION

Practice before the PTAB has grown significantly since the America Invents Act went into effect just over three years ago. Indeed, the Office last reported that over 4,600 PTAB petitions have been filed as of February 2016. Although the new rules themselves may not affect the growing popularity of these proceedings, they will certainly impact strategies for petitioners and patent owners alike.