Practice Points:

• USPTO responds to public comments on PTAB trial procedures, publishes several proposed rule changes for 60 day comment period.
• Proposed rules would:
  • allow patent owners to submit expert declarations or other new testimonial evidence, with their preliminary response to a petition seeking institution of an AIA review;
  • require a Rule-11 type certification that papers are supported by the facts and law, and not submitted for an improper purpose;
  • impose word-count limits on the length of most papers; and
  • clarify that the PTAB will continue to construe claims using the broadest reasonable interpretation standard, except for patents that will expire during proceedings and therefore cannot be amended.

Background:

On August 19, 2015, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). The proposal responds to public comments submitted during 2014, and is in addition to the “quick fix” changes to the PTAB trial procedures announced by USPTO Director Michelle K. Lee on March 27, 2015.

The Leahy-Smith America Invents Act (AIA) created new administrative proceedings permitting members of the public to challenge the validity of claims in issued patents. The available proceedings include inter partes review (IPR) available for all issued patents as of September 16, 2012, post-grant review (PGR), available for patents issuing from applications subject to the AIA’s first-inventor-to-file regime (generally applications with an effective filing date on or after March 16, 2013), and the transitional program for covered business method patents (CBM), available for patents directed to specific “business method” patents.

IPR and CBM proceedings have been unexpectedly popular as attractive and potentially less-costly alternatives to federal court litigation challenging patent validity. In her Director’s Blog post announcing the new proposed rules, Director Lee presented updated statistics concerning the PTAB trial proceedings:

• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.

http://www.uspto.gov/blog/ (accessed Aug. 19, 2015).

New Proposed Rules:

Since the creation of the AIA post-grant proceedings, the PTO has engaged the public and received extensive input on how to improve the process. Based on this input, a first set of “quick fixes” were announced in March. This second proposal provides further clarity to the proceedings and addresses certain concerns that have been raised. To provide context for its proposed improvements, the USPTO noted that proposals to expand the issues considered during PTAB trials or provide additional opportunities for parties to present evidence or develop their positions through discovery would jeopardize the PTAB’s need to issue timely final decisions. The USPTO also declined to adopt other comments by expressing a preference for allowing the PTAB panels to evaluate procedures on a case-by-case basis, allowing the agency to develop de facto guidance through published decisions, rather than promulgating comprehensive rules.

The USPTO proposes to amend the PTAB’s rules of procedure, 37 C.F.R. § 42.1, et. seq., in several respects. The following are those proposed changes most likely to affect strategy and tactics in PTAB proceedings:

Claims In Unexpired Patents To Construed According the “Broadest Reasonable Interpretation” Standard:

One continuing controversy arising in PTAB proceedings is whether claims under review should be construed by giving them the “broadest reasonable construction in light of the specification of the patent in which it appears” (BRI), 37 C.F.R. § 42.100(b), or the construction that would result from the “Phillips-type” analysis applied in the federal courts. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The USPTO originally implemented the AIA’s post-grant provisions by promulgating rules requiring claims to be interpreted using the same BRI standard that the USPTO uses during examinations or reexaminations.

In the proposed rules, the USPTO relies on a recent Federal Circuit decision, In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949 (Fed. Cir. July 8, 2015), as holding “that the BRI approach is consistent with legislative intent and reasonable under the Office’s rulemaking authority.” See BK Client Alert July 9, 2015. Based on that judicial endorsement, the USPTO declined to abandon its use of the BRI standard. It did, however, propose to apply the Phillips construction analysis to claims that will expire prior to the issuance of a final decision. Proposed 37 C.F.R. § 42.100(b).

It should be noted that the proper claim construction standard for PTAB trial proceedings is a subject of patent reform bills pending in Congress, which would direct the USPTO to apply the same standard as that used in federal court litigation. See Innovation Act, H.R. 9, § 9(b)(1)(C); PATENT Act, S. 1137, § 11(a)(4)(A)(vii); and; STRONG Patents Act of 2015, S. 632, § 102(a).

Claim Amendments During PTAB Proceedings:

Another controversial PTAB procedure involves the extensive requirements that a patent owner must meet to amend claims under review. In its response, the USPTO declined to promulgate specific rules governing motions to amend claims, but highlighted the PTAB’s recent decisions providing guidance on the standard for a successful motion to amend. For example, in MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42), the PTAB clarified how a patent owner may show that a proposed substitute claim is patentable over the relevant “prior art of record” and how, after making that showing, the burden shifts to the petitioner to show that the claim as amended is not patentable.

The USPTO declined to implement comments suggesting that patent examiners from the relevant art groups participate in PTAB trials when claims are amended, citing constraints necessary to reach a final decision within one year from the date of institution. As a result, the USPTO explained that the high standard for amending claims is necessary:

Moreover, AIA proceedings are neither ex parte patent prosecution nor patent reexamination or reissue. The Board does not conduct a prior art search to evaluate the patentability of the proposed substitute claims, and any such requirement would be impractical given the statutory structure of AIA proceedings. If a motion to amend is granted, the substitute claims become part of an issued patent, without any further examination by the Office. Because of this constraint, the Office has set forth rules for motions to amend that account for the absence of an independent examination by the Office where a prior art search is performed as would be done during prosecution, reexamination, or reissue.

Although the USPTO declined to modify the rules to ease restrictions on claim amendments during PTAB trials, the guidance in the MasterImage case and the published responses to public comments may result in more amended claims in AIA trials.

Procedures for Petitions and Oppositions:

In response to comments that the current procedures for filing and responding to a petition did not provide a level playing field, the USPTO proposed several procedural changes. First, the rules will allow the patent owner to include testimonial evidence, such as a declaration from a technical expert, in its preliminary response to a petition for review. Second, in order to reduce the need for discovery or cross-examination of witnesses at the institution stage, the USPTO proposed that “factual disputes will be resolved in favor of the petitioner solely for purposes of deciding whether to institute.” See Proposed 37 C.F.R. §42.108(c). The Office also proposed to change the rules to permit the petitioner to seek leave to file a reply to the patent owner preliminary response.

In one significant rule change, the USPTO will replace the current page limitation on petitions and briefs with a word-count limitation. Under the new rules, parties would be required to comply with the following limits, and include certifications that each paper is in compliance with the word-count limit:

(i) Petition requesting inter partes review: 14,000 words.
(ii) Petition requesting post-grant review: 18,700 words.
(iii) Petition requesting covered business method patent review: 18,700 words.
(iv) Petition requesting derivation proceeding: 14,000 words.
(v) Motions (excluding motions to amend): 15 pages.
(vi) Motions to Amend: 25 pages.

See Proposed 37 C.F.R. §42.24.

New Rule 11-Type Certification:

The USPTO proposed to amend 37 C.F.R. § 42.11 to include a certification similar to Fed. R. Civ. P. 11. The rule as proposed would state that:

By presenting to the [PTAB] a petition, response, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney, registered practitioner, or unrepresented party certifies that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:

1. 1. It is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of the proceeding;
   2. The claims, defenses, and other legal contentions are warranted by existing law or by a non-frivolous argument for extending, modifying, or reversing existing law or for establishing new law;
   3. The factual contentions have evidentiary support; and
   4. The denials of factual contentions are warranted on the evidence.
   5. Violations of the certification could result in sanctions or referral to the USPTO’s Office of Enrollment and Discipline.

Discovery:

The USPTO received many comments concerning the relative lack of discovery available during PTAB proceedings. The USPTO responded by discussing at length the factors bearing on whether leave to take discovery would be granted, as set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) (informative). Under these factors, the PTAB will consider requests for discovery on a case-by-case basis.

Practical Significance:

The U.S. Patent and Trademark Office is taking feedback seriously and is seeking further comment on the latest set of proposed changes. Interested parties should be vocal in providing feedback during the 60-day comment window.

The proposed changes allowing new testimonial evidence and clarifying the scope of claim amendments will provide patent owners with more robust mechanisms to avoid institution and/or seek to amend claims. Considering the proposed changes and recent decisions in REG Synthetic Fuels LLC v. Neste Oil OYJ, Case IPR2014-00192 (PTAB June 5, 2015) (Paper 48) and Masterimage 3D, Inc. v. Reald Inc, IPR2015-00040 (PTAB July 15, 2015) (Paper 42), the PTAB seems to be signaling a greater willingness to allow claim amendments.