Final Amendments to PTAB Trial Rules in Effect May 2

Posted by Post-Grant Group on Mar 31, 2016

The Patent Office has now posted the final amendments to the Rules of Practice for Trials Before the PTAB, which will be published in the Federal Register on April 1. Below is a summary of the key changes.

Effective date: The rules will be effective May 2, 2016. They will apply to all AIA petitions filed on or after the effective date and, to the extent applicable, any ongoing AIA preliminary proceeding or trial before the PTAB.

Phillips-type construction for patents that will expire before entry of a final written decision: The PTAB will permit either party to request by motion a Phillips-type construction if it certifies that the patent will expire within 18 months of the entry of the Notice of Filing Date Accorded to Petition. Such a request must be done by motion, triggering a conference call with the panel to resolve whether such a motion is appropriate under the circumstances and whether any other briefing is necessary for each party to be able to address adequately the appropriate construction standard. For instance, the petitioner may be afforded an opportunity to address a Phillips-type construction analysis before the patent owner is required to file its preliminary response.

Patent owner’s preliminary response: Patent owners may submit new testimonial evidence with their preliminary response, with the caveat that, if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of the petitioner solely for institution purposes. Then the petitioner will have an opportunity to cross-examine the declarant during the trial. In appropriate circumstances, a panel, by its discretion, may order some limited discovery, including cross-examination of witnesses, before institution. With a showing of good cause, a petitioner may also file a reply to the preliminary response.

Rule 11-type certification: Every petition, response, written motion, and other paper filed in a proceeding must comply with the signature requirements set forth in § 11.18(a), the PTO’s standard rule for all correspondence with the PTO. The Board may expunge any unsigned submission unless the omission is promptly corrected after being called to the counsel’s or party’s attention.

Motion for sanctions: The PTO has established a more specific procedure for bringing a sanctions motion before the PTAB. A motion for sanctions must be made separately from any other motion and must describe the specific conduct that deserves sanction. It must be authorized by the Board prior to its filing and, similar to a Rule 11 motion in federal district court, the moving party must serve the other party with the proposed motion at least 21 days prior to seeking authorization to file the motion for sanctions. The motion cannot be filed if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected. If warranted, the Board may award to the prevailing party the reasonable expenses, including attorney’s fees, incurred for the motion.

Word count: A word count instead of a page limit will now be used for petitions, patent owner preliminary responses, patent owner responses, and replies. The limit does not include a table of contents, a table of authorities, and other delineated non-argumentative portions of the papers. The new word count limits are below:

  • Petition, preliminary response, patent owner response (IPR/Derivation): 14,000 words
  • Petition, preliminary response, patent owner response (PGR/CBM): 18,700 words
  • Replies to patent owner responses to petitions: 5,600 words

Any paper whose length is specified by word count limits must include a certification stating the number of words in the paper.

Motions, including motions to amend and corresponding replies, are still controlled by page limits instead of word count limits.

Oral argument: Demonstrative exhibits must be served at least seven business days before the oral argument and filed no later than the time of the oral argument.

Proposed single judge pilot program: The PTAB has decided not to go forward with the proposed pilot program at this time.

*The original version of this post indicated the new rules go into effect on May 1, 30 days from publication. Since May 1 is a Sunday, they actually go into effect on May 2, so the post has been updated accordingly.

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