AIA Post-Grant Proceedings: Evolution of the Rules Rachel A. Kahler, Ph.D. Patent Agent General Mills, Inc. Christopher B. Tokarczyk Attorney at Law Sterne Kessler Goldstein & Fox, PLLC - 1 -
I. Introduction On September 16, 2012, the U.S. Patent and Trademark Office (Office) rules for the implementation and practice of post-grant proceedings legislated in the Leahy-Smith America Invents Act (AIA) went into effect 1, 2. Specifically, the AIA created administrative trial procedures before the Patent Trial and Appeal Board (PTAB) under which a party can petition for review of an issued patent under the following proceedings: (1) inter partes review (IPR) proceedings; (2) post-grant review (PGR) proceedings; and (3) the transitional post-grant review proceedings for covered business method (CBM) patents. After practicing under the initial rules for just under two years, the Office called on the public to provide comment. In recognition of the need to tweak the original rules, and in response to public comment, on March 27, 2015, Director Lee announced in her blog that three sets of rules update packages would be released 3. The first, Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, also informally called the Quick Fix was published on May 19, 2015 4, and included some fixes that were implemented immediately upon publication. The Quick Fix included relatively easy, though not necessarily trivial, modifications and clarifications to the post-grant proceedings rules. These included page limit changes to the Motion to Amend and the Petitioner s Reply, and clarifications affecting discovery and taking testimony, counsel, font, fees, requests for rehearing, and CBM requirements and proceedings. Section II of this paper discusses those changes that appear to present the most significant impact on post-grant practice; Section III discusses changes expected to have a less significant impact. On August 19, 2015, Director Lee announced a new set of proposed changes to the Rules of Practice, and promised future updates to the Trial Practice Guide in the third package 5. The proposed changes 6 ( Package 2 ) include an extensive discussion of the comments on which the proposed changes are based, as well as the rationale for proposing some changes while maintaining the status quo on others. Package 2 also invited further feedback. The topics in the proposed changes tackle more complex issues than those in the Quick Fix. Content of the additional two packages not already covered in Sections II and III are discussed in Section IV. Section V of this paper reviews the topics on which the Office calls for further comment in Package 2. 1 Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, Fed. Register, Vol. 77, No. 157, p. 48612. 2 Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, Fed. Register, Vol. 77, No. 157, p. 48680. 3 Director's Forum: A Blog from USPTO's Leadership, PTAB s Quick Fixes for AIA Rules to be Implemented Immediately, available at http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for ( Director s Blog ). 4 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, Fed. Register, Vol. 80, No. 96, p. 28561. 5 Director s Forum: A Blog from USPTO s Leadership, PTAB Update: Proposed Changes to Rules Governing PTAB Trial Proceedings, available at http://www.uspto.gov/blog/director/entry/ptab_update_proposed_changes_to 6 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, Fed. Register, Vol. 80, No. 161, p. 50720. - 2 -
II. Significant Changes in the Quick Fix package effective May 19, 2015 A. Changes to Motion to Amend Practice The Patent Owner s Motion to Amend has been one of the more controversial features of AIA reviews. The ability of a Patent Owner to amend claims during an AIA review has often been used justify use of the broadest reasonable interpretation (BRI) standard for claim construction in these reviews. 7 Yet, to date very few motions to amend have been granted. 8 The Office responded by promulgating new rules that make it easier for Patent Owners to amend claims and with the promise of more substantial rulemaking to follow. The AIA Rules of Practice for post-grant proceedings provide that the Patent Owner may file one motion to amend the patent and that such amendment may not enlarge the scope of the claims of the patent or introduce new matter. 35 U.S.C. 316(d)(1), (d)(3). The Office promulgated rules for motions to amend, such as 37 C.F.R. 42.121, which prescribes timing, scope, and content requirements for Motions to Amend. In Idle Free Systems, Inc. v. Bergstrom, Inc. IPR2012-00027 (PTAB June 11, 2013), the Board clarified and expounded the requirements for Motions to Amend in an informative opinion that concluded that the Patent Owner s burden includes distinguishing each proposed substitute claim over both the prior art of record and also prior art not of record but known to the Patent Owner. A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. 9 The Board further clarified that [a] showing of patentable distinction can rely on declaration testimony of a technical expert about the significance and usefulness of the feature(s) added by the proposed substitute claim, from the perspective of one with ordinary skill in the art, and also on the level of ordinary skill, in terms of ordinary creativity and the basic skill set. 10 Yet, the Board noted that A mere conclusory statement by counsel, in the motion to amend, to 7 PTAB Trial Practice Guide, Fed. Register, Vol. 77, No. 157, p. 48764. 8 As of August 17, 2015, only four motions to amend have been granted in AIA reviews. See IPR2013-00124; IPR2013-00402; IPR2013-00403; and IPR2014-0192 (Paper 48). 9 Id. at p. 7. 10 Id. at pp. 7-8. - 3 -
the effect that one or more added features are not described in any prior art, and would not have been suggested or rendered obvious by prior art, is on its face inadequate. 11 Package 2 notes that the Office recently clarified the Board s statement made in Idle Free System, Inc. v. Bergstrom, Inc., Case IPR2012 00027 (PTAB June 11, 2013) (Paper 26) (informative), that [t]he burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Id. at 7 (emphasis added). Specifically, the Office addressed what the references to prior art of record and prior art known to the patent owner mean, and how the burden of production shifts to the petitioner once the patent owner has made its prima facie case for patentability of the amendment. See MasterImage 3D, Inc. v. RealD Inc., Case IPR2015 00040, slip op. at 1 3 (PTAB July 15, 2015) (Paper 42). MasterImage 3D clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner s duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced. But the Office declined to adopt suggestions that Motions to Amend should be liberally allowed, such as by being evaluated the same way that the entry of a supplemental response in prosecution is evaluated as under 37 C.F.R. 1.111(a)(2). 12 Despite charges during the public comment period that the amendment process is heavily weighted against the Patent Owner, the Quick Fix and Package 2 rule changes make amending claims during a post-grant proceeding only slightly easier. In response to comments received from the public concerning amendment practice in AIA post-grant proceedings, the Office increased the page limitation for Patent Owner s Motion to Amend by ten pages to a total of twenty-five pages. The amended rules also allow a motion to amend to include a claims appendix that is not included in the page limitation. The amended rules also provide for a commensurate increase in the number of pages for Petitioner s opposition to a Motion to Amend (from fifteen to twenty-five pages). Although the Office proposed a word count limit rather than a page count limit for certain papers in Package 2, the page limits for Patent Owner s Motions to Amend and Petitioner s opposition thereto remain unchanged at twenty-five pages. The previous and proposed rule changes do not displace a party or practitioner s duties of candor and good faith, which requires the Patent Owner to make of record any additional prior art material to patentability known by the Patent Owner. But, the contemplated changes would be intended to more noticeably limit the burden on the Patent Owner, even though the Patent Owner is the party moving for the change in the patent. 13 B. Changes to the Petitioner s Reply As with the Patent Owner s Motion to Amend, the Petitioner s Reply was the subject of many comments submitted in response to the Office s request for comments in the summer of 2014. Many commenters focused on the fairness of the process and whether the format of the Petitioner s Reply was sufficient to fully respond to all relevant issues, particularly any new 11 Id. at p. 8. 12 Package 2 at 50722. 13 See Director s Blog. - 4 -
issues, which are commonly brought forth in the Patent Owner s Response. This handicap, commenters expressed, hindered the ability of the Board to have the full array of issues clearly laid out for them. As a result, the Petitioner s Reply was expanded to a twenty-five page limit in the Quick Fix package, matching that of the Motion to Amend. However, further consideration by the Office led to the proposal in Package 2 of a word count limit rather than a page count limit for the Petitioner s Reply, as well as several other major briefs. Package 2 proposes amending 37 C.F.R. 42.24 (c) to include a word count of 5,600 words instead of 25 pages. C. Changes to Discovery and Testimony The discovery period of post-grant proceedings follows the decision of the Board to institute a PGR, IPR, or CBM proceeding. Discovery available in post-grant proceedings is divided into two categories: routine discovery and additional discovery. Routine discovery does not require special permission from the Board or agreement between opposing parties and includes production of any exhibit cited in a submitted paper or in a testimony, cross examination of declarants, and production of information inconsistent with a position advanced during the post-grant proceeding. Additional discovery requires meeting threshold factors, permission from the Board, agreement between parties, or all of the above, and includes compelled testimony, mandatory initial disclosure (if agreed upon by the involved parties), live testimony (if ordered by the Board), and e-discovery. See 37 C.F.R. 42.51(b). Uncompelled direct testimony must be submitted in the form of an affidavit, while compelled deposition testimony must be in the form of a transcript signed by a witness. See Rule 42.53(a). The Office clarified in the Quick Fix package that cross examination of affidavit testimony is only available as routine discovery for affidavit testimony prepared for the proceeding, and amended 37 C.F.R. 42.51(b)(1)(ii) accordingly. This seems to suggest that cross examination of affidavit testimony of related proceedings (e.g., litigation or separate postgrant proceedings) is not considered routine discovery, but may be considered as additional discovery. While this clarification may provide a shield preventing cross-over of related proceedings, it should be noted that the standard for granting additional discovery differs between PGR and IPR, with the bar being lower in PGR ( good cause vs. interests of justice in IPR). The Quick Fix package clarified a few additional issues related to discovery and testimony. First, the Quick Fix package amends Rule 42.53(f)(7) to specify that testimony can be submitted as an exhibit by either party, regardless of which party is the proponent of the testimony. Second, the Quick Fix package clarified that cross examination is not limited to deposition testimony, but is available for any uncompelled direct testimony, and amended Rule 42.53(c)(2) to reflect this. III. Less Significant Changes in the Quick Fix package A. Making Objections Prior to the PTAB Quick Fix rule changes, the term motion in limine was included in the title of 37 C.F.R. 42.64. However, the rule does not actually discuss a specific motion in limine. Instead, 42.64 provides the manner and timing of objecting to deposition and other evidence submitted during a preliminary proceeding and trial. The rule also provides that these - 5 -
objections must be preserved using a motion to exclude. To clarify the rule, the Office amended 42.64 to delete motion in limine from the title of the rule. The Quick Fix also modified the manner in which objections are handled in an AIA review. Prior to the changes, 42.64(b)(1) required that objections be served. But merely requiring service of objections did not make those objections part of the record. The rule changes modified 42.64(b)(1) by replacing served with filed in order to require filing of objections, which also requires service under 42.6(e)(2). Despite the Office s concern for making objections part of the record, supplemental evidence used in responding to an objection under 42.64(b)(2) is still only required to be served and not filed. B. Changes to CBM Reviews As with IPR and PGR proceedings, the AIA permits CBM patent review trials to be extended beyond the twelve-month time period in limited circumstances such as upon a showing of good cause or for joinder with other proceedings. 35 U.S.C. 326(a)(11). Although the Board s rules for pendency reflect this feature in IPR and PGR proceedings, the rules for CBM patent reviews does not. See 37 C.F.R. 42.100, 42.200, and 42.300. To clarify and to harmonize the rule with similar rules in other post grant proceedings, the Office amended 37 C.F.R. 42.300(c) to add joinder as a reason for extending the pendency of a CMB patent review proceeding. In addition, the Quick Fix package provided further clarity regarding who may petition for a CBM review. The Transitional Program for Covered Business Method Patents has very specific requirements for who may petition for a CBM review. Particularly, only parties who have been charged with infringement (including those who have been served with a cease and desist letter) may petition. In addition, the timing of a CBM Petition must be after the availability of PGR has expired. In the Quick Fix package, the Office has further clarified that the Board may not institute a CBM Review when the Petitioner has filed a civil action challenging the validity of a claim of the patent before filing the Petition, and amended 37 C.F.R. 42.302 to reflect this update. This update follows a precedential decision in which a Petitioner filed a CBM Petition after filing two civil actions seeking declaratory judgment that the claims of the same patent are invalid. 14 C. Requests for Rehearing Limits The Quick Fix package clarified that a party may only file one request for rehearing as a matter of right, and amended 37 C.F.R. 42.71(d), accordingly. D. Designation of Multiple Back-up Counsel In patents, the term a is readily recognized to mean one or more. Not so in the Code of Federal Regulations, it would seem. The Office used the Quick Fix package to amend 37 C.F.R. 42.10(a) to replace a in front of back-up counsel with at least one to clarify that at least one back-up counsel must be designated if a party is represented by counsel. 14 SecureBuy, LLC v. CardinalCommerce Corporation, CBM 2014-00035 (P.T.A.B. April 25, 2014) - 6 -
E. Claim Fees The Quick Fix package provided an explanation of fees for challenged claims over twenty, in the case of IPR and PGR proceedings, or fifteen, in the case of CBM proceedings. Specifically, the Office clarified that because construction of any challenged dependent claim must also include the construction of the claim(s) upon which it depends even if the claim(s) upon which it depends is not challenged, fees are calculated for each of the challenged dependent claim and the claim(s) from which it depends. However, the Office also clarified that no claim will be counted more than once in calculation of fees. For example, if a Petitioner challenges claim 2, which depends from claim 1, but does not challenge claim 1, then the fees must include fees for 2 claims. On the other hand, if both claims 1 and 2 are challenged, the fees remain calculated for 2 claims claim 1 is not counted twice for the purposes of fees. This applies to all post-grant proceedings, and 37 C.F.R. 42.15(a)(3), 42.15(a)(4), 42.15(b)(3), and 42.15(b)(4) have accordingly been updated to add, including unchallenged claims from which a challenged claim depends after each claim in excess of [relevant claim number]. F. Eliminating Some Gamesmanship with a Required Font Given the limited number of pages in AIA post-grant proceedings pleadings, parties in these proceedings resorted to narrow fonts to pack as much as possible into the allotted space. In AIA post-grant proceedings filings, the Office had required either a proportional or monospaced font that is 14-point or larger, with an additional requirement that any monospaced font must not contain more than four characters per centimeter or ten characters per inch. See 37 C.F.R. 42.6(a)(2)(ii). But the Office received briefs that utilize narrow fonts that although compliant with these requirements have nevertheless proved to be difficult to read. To address this concern, the Office amended 37 C.F.R. 42.6(a)(2) to require 14-point, Times New Roman proportional font, with normal spacing, to ensure readability of all briefs. IV. Proposed Rule Changes in Package 2, published August 20, 2015 A. Word Counts Package 2 includes proposed changes to the rules to better fine tune the lengths of major briefs. While the Quick Fix updated the page limits for the Motion to Amend and Petitioner s Reply, Package 2 refines the limitations on the lengths of many of the major briefs in response to comments that suggest that a word count would be a fairer way to balance brief lengths. As a result, the Office proposes to change 37 C.F.R. 42.24 to change Petition length to a word count rather than page count (for IPR proceedings: 14,000; for PGR proceedings: 18,700; for CBM proceedings: 18,700; and for derivation proceeding: 14,000), with the corresponding Patent Owner Preliminary Response and Response to Petition having the same word limit as the Petition. The page limits for Motions to Amend remain unchanged at 25 pages, and other Motions remain limited to 15 pages, with each corresponding Opposition to Motion being identically limited. Replies are proposed to be limited to 5,600 words for Replies to Patent Owner Responses to Petitions, 5 pages for Replies to Oppositions (excluding Replies to Oppositions to Motions to Amend), and 12 pages for Replies to Oppositions to Motions to Amend. The Office proposes that a certification of word count be required for each document subject to a word count, which can be the word count of the word-processing system used to prepare the document. - 7 -
B. Updates to Discovery and Taking Testimony Proposed updates to discovery rules were unveiled in Package 2 to address comments submitted by the public. The first in the Patent Office s proposed fixes related to discovery includes the types of evidence available for the Preliminary Response. Importantly, the discovery period does not include the Patent Owner Preliminary Response. This effectively limits the types of evidence available for inclusion in the Preliminary Response. For example, testimonial evidence is not provided for in the rules for the Preliminary Response at this time. Because institution of a post-grant proceeding suggests an initial predisposition of the Board toward accepting the arguments laid out in a Petition, some commenters on the PTAB rules propose that testimonial evidence to better address similar evidence allowed in the Petition is only fair. Given the rather high likelihood of a PTAB decision cancelling claims over 60% of trials instituted and decided resulted in all claims being deemed unpatentable, though this is decreasing over time it would seem in the best interests of a Patent Owner to avoid a post-grant proceeding altogether. Other commenters, however, argue that no new testimonial evidence should be allowed in the Preliminary Response because the Petitioner cannot respond before a decision to institute a post-grant proceeding is made, though it appeared that some commenters that opposed inclusion of new evidence in the Preliminary Response hinged on whether a brief response for the Petitioner is available. Package 2 proposes allowing supporting evidence in the Preliminary Response. This change is reflected in the proposed amended language of 37 C.F.R. 42.107 and 42.207. Importantly, the Office does not propose restrictions to the types of new evidence or the scope, other than that there is no right of cross-examination of a declarant prior to institution in order to preserve the tight timeline prior to the Decision to Institute. However, the Office does rely on the new word count proposal for Preliminary Responses, which are equal to the word count limitations proposed for the respective Petition, to limit the length of the Preliminary Response. Secondly, discovery rules related to identifying the real-party-in-interest (RPI) were addressed in Package 2 by indicating that further rules changes will follow, and guidance will further be provided via updates to the Office Patent Trial Practice Guide and by designating opinions as precedential or informative, as warranted. Package 2 also clarified that discovery relating to RPI will remain as additional discovery, and emphasized that it believes that the Garmin factors 15, without any modifications, are particularly suitable for determining whether additional discovery should be allowed. The Office declined to limit the availability of raising issues related to RPI to the pre-institution stage as requested by some commenters. However, the Office indicated that it would encourage RPI discovery issues to be raised as early as possible, and as soon as they arise in a proceeding. The impact of a late challenge that could have been raised earlier, and any impact of such a delay, will be considered by the Office on a case-by-case basis. The Office plans to add further discussion on the subject of late challenge to RPI to the Office Patent Trial Practice Guide. Finally, the topic of live testimony at oral hearings was addressed in Package 2. Interestingly, public commenters almost unanimously indicated that live testimony had very limited benefit during the oral hearing, and suggested various changes including time limits and limitations to when live testimony may be heard (e.g., when the credibility of the witness is 15 Garmin Int l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (PTAB March 5, 2013) - 8 -
questioned and is critical to resolving the trial). The Office declined to make most of the changes suggested, indicating that the PTAB will continue to use its discretion in deciding when and how to allow live testimony during the oral hearings. The Office did, however, propose modifying 37 C.F.R. 42.70(b) to require at least seven, rather than five, days before oral argument for exchange of exhibits, including live testimony, to provide additional time for the parties to resolve disputes concerning demonstrative exhibits. C. Rule 11-Type Certification In order to address concerns of misuse of post-grant proceedings and to bolster the already-present duty of candor and good faith, the Office proposes inserting a Federal Rule of Civil Procedure Rule 11-Type certification for all papers filed with the PTAB into 37 C.F.R. 42.11. The proposed amendment provides for sanctions for misconduct, including the possibility of misconduct being reported to the Office of Enrollment and Discipline for investigation. In particular, the proposed changes to Rule 42.11 include certification that a paper is not being presented for any improper purpose (e.g., harassment, cause delay, or increase cost), the claims, defenses, and contentions are warranted by existing law, the factual contentions have evidentiary support, and the denials of factual contentions are warranted on the evidence. Sanctions related to this amendment can hold any attorney, registered practitioner, law firm, patent agent, or party responsible, with law firms being held jointly responsible for a violation committed by a partner, associate, or employee of the firm. Further, the proposed amendments provide for awarding the prevailing party in a motion for sanctions with reasonable expenses incurred for the motion. D. Addressing Claim Construction of Expired Patent Claims The Quick Fix rules package did not address comments directed to claim construction standards for either unexpired or expired patent claims. Presently in IPRs, CBMs, and PGRs, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b), 42.200(b), and 42.300(b). The Board has currently been reviewing expired claims similarly to that of a district court using the Phillips standard. 16 Yet, the standard of review of expired claims is not presently codified in the rules. In a number of recent decisions, the Federal Circuit has upheld use of the BRI standard during these post-grant proceeding despite challenges to it. For example, in Microsoft v. Proxyconn 17, the court denied Proxyconn s challenge to the Office s authority to use the BRI standard, stating: Proxyconn s argument is foreclosed by our decision in In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015), rendered after the briefing in this case began. In Cuozzo, this court held that the broadest reasonable interpretation standard in IPRs was properly adopted by PTO regulation. Id. at 1282. Because we are bound by the decision 16 See, e.g., Cisco Systems, Inc. v. AIP Acquisition, LLC, IPR2014-00247, Paper 20 (P.T.A.B. July 10, 2014) (citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)). 17 Microsoft Corp. v. Proxyconn, Inc.2015-1542, 2015-1543 (Fed. Cir. June 16, 2015). - 9 -
in Cuozzo, we must therefore reject Proxyconn s argument that the Board legally erred in using the broadest reasonable interpretation standard during IPRs. 18 Just as in Proxyconn, the Office has regularly intervened in appeals of post-grant proceedings before the Federal Circuit to defend its use of the BRI standard. Package 2 proposes rule changes to address claim construction standards, such as for patent claims that have expired or will expire prior to the issuance of a final decision in an AIA post-grant proceeding. Specifically, the Office seeks to amend 37 C.F.R. 42.100(b), 42.200(b), and 42.300(b) to codify application of the Phillips standard for patents that will expire prior to issuance of any final written decision by the Office. Not surprisingly, the Office indicated in Package 2 that it will continue to apply the BRI standard for unexpired patent claims, despite comments advocating removal of this standard. The Office has not provided exact contours for these proposed rules, and Package 2 seeks comments on how to implement these changes, asking the following: Should the Office set forth guidelines where a petitioner may determine, before filing a petition, which claim construction approach will be applied by the Office based on the relevant facts? Should the petitioner, who believes that the subject patent will expire prior to issuance of a final written decision, be required to submit claim interpretation analysis under both a Phillips-type and broadest reasonable interpretation approaches or state that either approach yields the same result? Should the Office entertain briefing after a petition if filed, but before a patent owner preliminary response is filed, concerning what standard should be applied? 19 V. Call for Further Comment A. Privilege for Domestic Patent Agents and Foreign Patent Practitioners In 2015, the Office launched an initiative to explore issues associated with confidential communications with patent agents and foreign patent practitioners. Having received many public comments in response to a request for comment, the Office has extended a request for comment on the subject of attorney-client privilege or other limitations on discovery in PTAB proceedings. The Office specifically requested comments with regard to whether rules related to privilege should be issued for PTAB proceedings, particularly whether communications between patent applicants and domestic patent agents and/or foreign patent practitioners should be recognized as being privileged under the same circumstances that communications between applicants or owners and U.S. attorneys are considered privileged. Comments directed to language, scope, or other considerations for creating privilege, including possible amendments to any of 37 C.F.R. 42.51, 42.52, 42.55, 42.62, or 42.62 are requested. Given moves in Europe and Australia to recognize all patent practitioners with the legal authority to practice patent law in the countries in which they practice, and based on comments 18 Id., Slip. Op. at p. 6. 19 Package 2 at 50722. - 10 -
already received by the Office with regard to privilege including domestic patent agents and foreign patent practitioners, it would be reasonable to expect any comments to generally favor extending privilege to agents and foreign patent practitioners for the purposes of AIA post-grant proceedings. While the Office has limited ability to affect state and federal rules with regard to privilege in non-office proceedings, it may take the opportunity to standardize attorney-client privilege within Office proceedings by formally extending privilege to domestic patent agents and foreign patent practitioners in AIA post-grant proceedings rules. B. Office Patent Trial Practice Guide Director Lee indicated that the Office Patent Trial Practice Guide was intended to be updated following rules changes and as appropriate as the AIA post-grant proceedings are tested by further practice. To further this goal, the Office invited comment on a number of specific topics in Package 2. Questions include: 1) Should the Office set forth guidelines where a Petitioner may determine, before filing a Petition, which claim construction approach will be applied by the Office based on the relevant facts? 2) Should the Petitioner, who believes that the subject patent will expire prior to issuance of a final written decision, be required to submit claim interpretation analysis under both a Phillips-type and BRI approaches or state that either approach yields the same result? 3) Should the Office entertain briefing after a Petition is filed, but before a Patent Owner Preliminary Response is filed, concerning what standard should be applied? C. Forgoing Right to Amend by Patent Owner Some commenters identified a scenario where the availability of claims to be amended is forfeited by the Patent Owner, and thus questioned the appropriateness of applying a BRI to such claims. The Office indicated that it would seem unworkable to switch between claim interpretation standards because the Patent Owner opted out of the opportunity to amend after a Petition has been filed. Thus, the Office invited comments suggesting workable and efficient solutions for such a scenario, including suggestions for revisions of the rules or the Office Patent Trial Practice Guide. D. Single-Judge Review of Petitions Pilot Package 2 addressed several comments regarding concerns that the initial decision to institute a proceeding may prejudice the board against the Patent Owner, since the decision to institute requires that the Petitioner establish that it is more likely than not at least one claim is unpatentable for PGR, and that the Petitioner will prevail with respect to at least one claim for IPR. While the office stated that it believes that such prejudice is unlikely, it signaled that it will likely call for comments on a proposed pilot program where a single judge decides whether a post-grant proceeding is instituted, followed by the addition of two additional judges for the actual proceedings. The Request for Comments will be meant to assess whether providing fresh eyes, while not having to start fresh with all 3 judges during proceedings will provide a fairer trial, and will further likely seek comments on other issues relevant to fair and efficient decision making. The proposed single-judge review pilot is, in part, in response to comments suggesting that any requests for rehearing for Decisions to Institute should include a different panel of judges. Using a single judge to decide whether to institute a proceeding would provide some flexibility for providing fresh eyes for a rehearing. Given that any party is allowed one request - 11 -
for rehearing as a matter of right, a program that provides fresh eyes for a request might be welcome to Petitioners and Patent Owners alike. In the meanwhile, the Office has revised its PTAB Standard Operating Procedure 1 to describe situations where, and reasons why, an expanded panel may be utilized 20. E. Deposition Practice The Office received several comments regarding deposition practice before the Office in post-grant proceedings, including topics such as timing of notice of deposition, objections, costs associated with the testimony of a witness, and the ability to confer with a witness during deposition. In response to these comments, the Office invited further comment on how to amend 37 C.F.R. 42.53(d)(4). In particular, the Office requested comments on whether the rule be amended to reduce the amount of lead time for filing a notice of deposition, allow parties to stipulate the timing for filing, or allow both options. The Office directed practitioners to the Office Patent Trial Practice Guide for guidance regarding witness expenses associated with discovery, but also requested comment on whether any additional clarification is needed. VI. Conclusion The AIA introduced IPR, CBM and PGR proceedings to reduce patent-related litigation and to provide an expedient way to discard low quality patents. Though various models of similar proceedings existed prior to the AIA elsewhere in the world, the Office had to tailor rules that addressed the intent of the AIA while providing a procedure uniquely tailored to U.S. patent practice and infrastructure. The Office appears to recognize that the rules were not perfect in their original form and has addressed some of the more obvious issues, with additional plans to adjust the rules in the future. It is reasonable to expect that the rules will continue to be finetuned even further as the rules continue to be tested. 20 Patent Trial and Appeal Board Standard Operating Procedure 1 (Revision 14), Assignment of Judges to Merits Panels, Interlocutory Panels, and Expanded Panels, available at http://www.uspto.gov/sites/default/files/documents/sop1%20-%20rev.%2014%202015-05-08.pdf - 12 -