On April 1, 2016, the Patent Office announced several changes to practice before the Patent Trial and Appeal Board (“PTAB”). On April 27, 2016, the Patent Office announced a minor correction to those rules. Here are four key things you need to know about those changes, which took effect on May 2, 2016, and apply to all AIA petitions filed on or after that date and to any ongoing preliminary proceedings and trials. See 81 Fed. Reg.18,750 (Apr. 1, 2016).
1. Page Limits Are Gone and Word Count Limits Are Here
For inter partes review (“IPR”) petitions, the old limit of 60 pages is gone and replaced by a 14,000 word limit. For post-grant review (“PGR”) petitions and covered business method patent review (“CBM”) petitions, the old limit of 80 pages is gone and replaced by an 18,700 word limit. Preliminary Responses and Responses by the patent owners now have corresponding word limits (14,000 for IPRs and 18,700 for PGRs and CBMs). Replies by petitioners now have a 5,600 word limit, as opposed to the old limit of 15 pages. These word limits do not include the table of contents, table of authorities, mandatory notices under 37 C.F.R. § 42.8, certificates of service or word count, or exhibit or claim listing appendices. See 37 C.F.R. § 42.24. Motions, other than motions to amend, remain limited to 15 pages and motions to amend are limited to 25 pages. See 37 C.F.R. §§ 42.24(a)(1)(v), 42.24(a)(1)(vi). Oppositions to motions have corresponding page limits. See 37 C.F.R. § 42.24(b)(3). Replies to oppositions, other than motions to amend, are limited to 5 pages and replies to motions to amend are limited to 12 pages. See 37 C.F.R. § 42.24(c). Concerning text formatting, 14-point, Times New Roman font and double spacing must be used except in claim charts, headings, tables indices, signature blocks, and certificates of service. See 37 C.F.R. § 42.6(a). Block quotations may be 1.5-spaced, but must be indented from both margins. Id.
The take-home from these changes is to be aware of the new requirements and periodically check word counts when drafting and certainly before finalization and filing pleadings in the PTAB.
2. Patent Owners May Now Include Supporting Testimonial Evidence In Their Preliminary Responses As A Matter Of Right
Prior to the amendments, patent owners were precluded from using new testimonial evidence in their Preliminary Responses unless the “interests of justice” were served. Now, patent owners may include supporting evidence as a matter of right. See 37 C.F.R. § 42.107(a). Any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of determining whether to institute a trial. See 81 Fed. Reg.18,750, 18,755, 18,756 (Apr. 1, 2016). Should the new testimonial evidence warrant a reply, a petitioner may seek leave to file a reply, which requires a showing of good cause. See 81 Fed. Reg.18,750, 18,757 (Apr. 1, 2016). “[W]hether petitioner will be afforded a reply and the appropriate scope of such a reply rests best with the panel deciding the proceeding to take into account the specific facts of the particular case.” Id.
The take-home from this change is that patent owners may now submit new expert testimony to support their arguments as to why a trial should not be instituted.
3. In Limited Circumstances, A Phillips/District Court-Type Claim Construction Will Be Used
Prior to the 2016 amendments, a claim subject to review by the PTAB in an AIA proceeding was given its broadest reasonable construction in light of the specification of the patent in which it appears. That cannon still applies to claims in unexpired patents. See, e.g., 37 C.F.R. §§ 42.100(b), 42.200(b). In addition, either party may request a district court-type claim construction (see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)) if that party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition. See 37 C.F.R. § 42.100(b). The request, accompanied by the certification, must be made by way of motion and within 30 days from the filing of the petition. See id.
The take-homes from this change are to be certain to revisit the expiration date of the involved patent and to decide whether a Phillips-type construction would favor your position in the dispute and in light of any parallel district court action.
4. A Rule 11-Type Certification Is Now Required And Sanctions For Noncompliance May Be Imposed
The 2016 amendments greatly expanded 37 C.F.R. § 42.11, which was directed to the duty of candor owed to the Patent Office. The 2016 amendments require that every paper filed with the PTAB comply with the signature requirements of 37 C.F.R. § 11.18(a). The amendments also state that any representation to the PTAB is to be made in compliance with the certification requirements under 37 C.F.R. § 11.18(b)(2), and provide the PTAB with the option of imposing an appropriate sanction, after notice and a reasonable opportunity to response, for violation of 37 C.F.R. § 42.11(c). See 37 C.F.R. § 42.11. Motions for sanctions must be authorized and made separately from any other motion “and must describe the specific conduct that allegedly violates [37 C.F.R. § 42.11(c)].” See 37 C.F.R. § 42.11(d)(2). The party seeking authorization to file the motion for sanctions must serve the other party with the proposed motion at least 21 days prior to seeking authorization, and the served party has the opportunity to cure within 21 days of service. Id. “If warranted, the Board may award to the prevailing party the reasonable expenses, including attorney’s fees, incurred for the motion.” Id.
The take-home from these changes is that the PTAB now has more power to deter bad behavior and that practitioners may bring bad behavior to the PTAB’s attention. Should a practitioner elect to do the latter, be aware that the opponent has a chance to cure within 21 days, authorization is required, and that an unsuccessful motion may put you on the hook for reasonable expenses.
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