The United States Patent and Trademark Office (USPTO) has issued a notice of proposed rulemaking to amend the rules of practice in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). The proposed rule provides that if the Board institutes inter partes review, post-grant review, or transitional program for covered business method patent proceedings, trial will proceed on all challenged claims and on all grounds of unpatentability.

The USPTO is also proposing changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

Additionally, the USPTO is proposing a change to eliminate the presumption that a genuine issue of material fact created by patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review. Thus, consistent with the statutory framework, any testimonial evidence will be taken into account as part of the totality of the evidence.

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