Proposed Rule Changes for AIA Reviews at the PTAB

On August 19, 2015, in a blog post on the agency’s website, U.S. Patent and Trademark Office (“USPTO” or “Office”) Director Michelle Lee announced a second round of proposed rule changes for America Invents Act (“AIA”) reviews. These new proposed rules follow an initial round of rule changes announced in March that included, among other things, increased page limits for certain filings.

As part of the most recent rule changes, Director Lee stated that the new rules would allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as an expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted. Because there will be no cross-examination of the witnesses, the Office also proposes amending the rules to provide that any factual dispute that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of making a determination about whether to institute. The rule changes would also allow the petitioner to seek leave to file a reply to the preliminary response.

The Office also proposes a new rule that would implement a word count limitation for petitions, patent owner preliminary responses, patent owner responses, and petitioner replies. Specifically, the proposal would amend 37 CFR § 42.24 to substitute a 14,000-word limit for a 60-page limit, an 18,700-word limit for an 80-page limit, and a 5,600-word limit for a 25-page limit.

The proposed rules also include “a new requirement on practitioners before the PTAB [Patent Trial and Appeal Board], akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.” Under Rule 11, attorneys can be sanctioned for failing to perform an adequate pre-suit investigation.

The proposed rules would also “clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.”

Finally, Director Lee stated that the USPTO is also “considering issuing a request for comments related to the staffing of the PTAB panels for the institution phase of the proceedings.” This is likely due to public suggestions that the panel of judges that decides institution should be different from the panel that makes the final determination.

The USPTO’s notice also explains, among other things, that: (i) 37 CFR § 42.70(b) will be amended to require demonstratives to be exchanged at least seven days before oral hearing, as opposed to five; (ii) the PTAB will continue to develop motions-to-amend practice through its own body of decisions; (iii) requests for additional discovery will continue to be decided according to the Garmin factors; (iv) the PTAB will continue to allow challenges to the real-party-in-interest at any time during the proceeding, on a case-by-case basis; and (v) the PTAB will continue to consider requests for live testimony on a case-by-case basis.