PTO Issues First Set of PTAB Rule Changes

By: Joseph O. McPartland

Last month, on May 19, 2015, after a notice and comment process yielded some thirty seven sets of comments from the public,1 the U.S. Patent and Trademark Office (USPTO) published a first set of amendments to the rules of practice for post-grant proceedings before its Patent Trial and Appeal Board (PTAB).2 The USPTO characterizes these rule changes, as “quick fix” changes of simple scope that will immediately improve PTAB proceedings. A summary of the quick fix rule changes is provided below.

Content and Formatting of Briefs

• Increasing the page limit for a motion to amend to 25 pages3
• Increasing the page limit for an opposition to a motion to amend to 25 pages4
• Permitting an appendix for a claim listing accompanying a motion to amend that is not counted toward the motion to amend page limit5
• Increasing the page limit for a reply to an opposition to a motion to amend to 12 pages6
• Increasing the page limit for a reply to patent owner response to a petition to 25 pages7
• Requiring in post-grant proceeding filings a 14-point or larger Times New Roman proportional font with normal spacing to ensure readability8
• Clarifying that supplying a statement of material fact by a party is optional9 Counsel

• Permitting designation of more than one back-up counsel for a post-grant proceeding10 Fees
• Clarifying the requirement to include in a claim count for fee calculating purposes any unchallenged claims from which a challenged claim depends11 1 See http://www.uspto.gov/page/comments-trial-proceedings-under-america-invents-act-patent-trial-and-appeal- board.
  2 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg. 28,561 (May 19, 2015) (https://www.federalregister.gov/articles/2015/05/19/2015-12117/amendments-to-the-rules-of- practice-for-trials-before-the-patent-trial-and-appeal-board).

  3 37 C.F.R. § 42.24
  4 37 C.F.R. § 42.24
  5 37 C.F.R. §§ 42.121, 42.221 6 37 C.F.R. § 42.24
  7 37 C.F.R. § 42.24
  8 37 C.F.R. § 42.6
  9 37 C.F.R. §§ 42.23, 42.24
  10 37 C.F.R. § 42.10
  11 37 C.F.R. § 42.15

Discovery

• Clarifying that routine discovery includes only the cross-examination of affidavit testimony prepared for the proceeding12

Testimony

• Clarifying that uncompelled direct testimony must be submitted in the form of an affidavit13
• Clarifying that either party is permitted to file testimony as an exhibit14 Motions in Limine

• Clarifying that motions in limine are not permitted in PTAB proceedings15 Objections

• Clarifying that objections to evidence must be filed in the PTAB in order to make the objections part of the record 16

Requests for Rehearing

• Clarifying that a party may file only a single request for rehearing as a matter of right17 Covered Business Method Patent Review

• Clarifying that the pendency of a covered business method patent review proceeding may be extended in the case of joinder18
• Clarifying that no covered business method patent review proceeding of a challenged patent may be instituted when the petitioner has filed a civil action challenging the validity of a claim of the patent before filing the petition19 Later this summer, the USPTO is expected to issue, and request public comment on, a second proposed rule package containing more substantive changes to the PTAB rules governing the conduct of post-grant proceedings.

  12 37 C.F.R. § 42.51 13 37 C.F.R. § 42.53 14 37 C.F.R. § 42.53 15 37 C.F.R. § 42.64 16 37 C.F.R. § 42.64 17 37 C.F.R. § 42.71 18 37 C.F.R. § 42.300 19 37 C.F.R. § 42.302

Additionally, the USPTO plans to modify the Patent Trial Practice Guide to clarify various aspects of PTAB practices, such as the structure and times for taking action in post-grant proceedings.

As with all things post-grant, the process and the procedures continue to be refined as skilled lawyers advocate for their clients and the PTAB determines whether certain practices should be codified as clearly falling within or outside the governing rules. Though the rules continue to evolve, it appears clear that the PTAB wants to distinguish post-grant proceedings from district court litigation in areas such as discovery, motion practice, and appealable review of its decisions. Further, while additional rule changes are forecast, one can be reasonably certain that the scope of those changes will continue to be narrowed as the PTAB finds the right balance between post-grant practices and procedures and those more commonly seen in district court litigation.