On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will take effect. The rules apply to all currently pending and future proceedings before the PTAB.

The primary amendments are:

Testimonial Evidence Permitted in Patent Owner Preliminary Response

Previously, patent owners could not submit testimonial evidence, such as expert declarations, until after the institution of the post-grant proceeding. As amended, the rules permit submission of testimonial evidence with the preliminary response. The rules also allow petitioners to seek leave to file a reply to the preliminary response upon a showing of good cause. The amended rules note, however, that any genuine issues of material fact resulting from the testimonial evidence will be resolved in favor of the petitioner.

The amended rules raise new strategy considerations for the patent owners in preparing preliminary responses. Under the new system, a patent owner must balance the risk of giving the petitioner advance notice of positions (e.g., allowing petitioner’s declarant to have the benefit of rebuttal testimony prior to any deposition) with the benefit of convincing the PTAB to deny institution (odds are significantly against a patent owner if trial is instituted). Even if a patent owner may be hesitant to submit evidence directed to the merits of an art rejection in a preliminary response, the new rules will allow patent owners to more effectively address other issues, such as real-party-in-interest and whether or not a cited reference qualifies as prior art. In addition, if evidence submitted with a preliminary response is deemed insufficient, the PTAB’s institution decision may offer guidance on how to remedy the insufficiency.

Length of Key Filings Changed From Page Length to Word Count

The amended rules also change the length limit of key filings from pages to words. Below is a summary of the new limits (does not include grounds for standing and mandatory notices):

Proceeding Petition Preliminary Response Patent Owner Response Petitioner Reply
IPR 14,000 words 14,000 words 14,000 words 5,600 words
PGR 18,700 words 18,700 words 18,700 words 5,600 words
CBM 18,700 words 18,700 words 18,700 words 5,600 words

The change in limits provides parties more opportunity to utilize figures, graphics, and claim charts to present arguments.

Phillips-Type Claim Construction Standard for Soon-to-Expire Patents

Under the amended rules, the PTAB will also continue to apply the “broadest reasonable” claim construction standard in post-grant proceedings. But the amended rules will apply the Phillips-type standard for patents that expire before the issuance of a final written decision. Furthermore, the rules allow parties to move for Phillips-type claim construction if the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to the Petition.

Of course, the Supreme Court is in the process of deciding the issue of whether the use of the broadest reasonable interpretation standard in AIA post-grant proceedings is appropriate in Cuozzo Speed Technologies v. Lee, Case No. 15-446 (Supreme Court Jan. 15, 2016).

Duty of Candor

The amended rules also require parties to include a Rule 11-type certification for papers filed with the PTAB. The rules also provide for sanctions for noncompliance. For more information on amended Rule 42.11 (Duty of Candor), please see our recent blog post on the issue at https://www.ipintelligencereport.com/2016/04/13/patent-office-updates-rules-for-post-grant-proceeding-duty-of-candor/.