USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

Foley & Lardner LLP

Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules changes on May 19th. The prior and newly proposed rule changes may impact proposed legislative changes being debated in Congress. Among others, some of the more significant changes being proposed in the new notice are as follows.

Patent Owner Could Submit Newly Created Testimonial Evidence in Its Preliminary Response

At present, a patent owner can only use declarations and testimonial evidence already in the record, such as that from original prosecution of the patent or a parallel litigation proceeding. Under the proposed rule, patent owners could retain and use new declarants to respond to a petition in the preliminary response, prior to an institution decision.

Importantly, however, if there are factual disputes, such as a petitioner’s expert disagreeing with the patent owner’s expert in a preliminary response, the Board states that such disputes will be resolved in the petitioner’s favor for purposes of the institution decision. Both parties would then be able to conduct cross-examination of the experts post-institution, but the Board would not allow such cross-examination to occur before the institution decision.

Petitioner Could Move for Leave to Reply to Patent Owner’s Preliminary Response

To balance the rights of petitioner, the USPTO proposes to permit the petitioner to seek leave to reply to a patent owner’s preliminary response. The notice does not indicate what circumstances would support such a request, but presumably new testimonial evidence in the patent owner’s preliminary response would provide a potential justification for seeking such leave.

Parties Would Be Required to Make Rule 11-Type Certification on All Filings

To address comments that IPR and other post-grant proceedings under AIA may be used to harass patent owners or abuse the process, the USPTO proposes to require all parties to make Rule 11-type certifications on their papers. If violations are detected, motions for sanctions may be authorized.

The certification would require the filer to state:

“to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:

(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.”

Broadest Reasonable Interpretation of Claims Would Be Retained

The USPTO has not proposed any changes to this standard, despite comments requesting that it do so, except for a narrow category of patents that will expire prior to reaching a final decision by the Board.

No Changes to Amendment Practice in This Notice

The USPTO has not proposed any changes to current amendment practice in its notice, pointing out that it recently increased page limits for motions to amend in its earlier rules package and that it has clarified the scope of prior art “known” to the patent owner in its MasterImage decision (over which proposed claims must be shown to be allowable) to reduce the burden on patent owners seeking to amend their claims.

Parties Would Have Longer Time to Review Proposed Demonstratives Prior to Final Hearing

The USPTO has proposed to increase the time to 7 business days for the parties to exchange demonstratives prior to the final hearing. Most parties use demonstratives such as powerpoint slides or excerpts from exhibits of record as demonstratives, and this would give parties more time to meet and confer and resolve disputes before the hearing.

USPTO Proposes Using Word Count Limit Rather Than Page Limit for Key Filings

With respect to the petition, preliminary response, and petitioner’s reply, the USPTO proposes to use a word count limit rather than a page limit. Parties have had trouble in the past complying with page limits and run into complications, for example, when they cited extensively to declarations rather than explaining their arguments in the body of their filings.

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Foley & Lardner LLP

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