United States: US Patent Trial And Appeal Board Proposes Rule Changes To AIA Trials

The United States Patent and Trademark Office (USPTO) recently issued its proposed changes to the rules for AIA trials, which include inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business methods (CBM). Former Director David Kappos had promised to revisit the rules, and the USPTO is doing so nearly three years after establishing AIA trials. The litigation landscape has changed drastically since then, and changes are continuing. Importantly, the USPTO responded to comments received in response to a preliminary request for comments. These responses may prove important to ongoing practices, including interaction between AIA trials, reissues, continuations and reexaminations.

The proposed rules address the following areas:

  1. Claim construction standard
  2. A patent owner's motions to amend
  3. A patent owner's preliminary response
  4. Additional discovery
  5. Obviousness
  6. Real party-in-interest
  7. Multiple proceedings
  8. Extension of one-year period to issue a final determination
  9. Oral hearing
  10. General topics
  11. Rule 11-type sanctions

Summary of the proposed rules and PTAB's response to comments

Below is a summary of the proposed changes and the Patent Trial and Appeal Board's (PTAB) response to the comments that were submitted.

Claim construction

The PTAB proposes that Phillips claim construction should be applied to claims for patents that will expire prior to the issuance of a final written decision.

Patent owner's motions to amend

The ultimate burden of persuasion of patentability will remain with the patent owner when submitting a motion to amend. Patent owners are encouraged to submit only a single substitute claim for each canceled claim, even though the rules do not prohibit proposing more than one substitute claim.

Patent owner's preliminary response

The rules being proposed would permit the patent owner to submit new testimonial evidence in the patent owner's preliminary response. The PTAB plans to resolve in favor of the petitioner any material factual disputes found in the petition, preliminary response and, if any, a reply. Any cross-examination will occur after institution.

Additional discovery

The PTAB does not propose to change how it handles requests for additional discovery. Currently, the PTAB utilizes the factors provided in Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26). The PTAB considers the Garmin factors flexible and able to provide a representative framework that can guide the parties and help the PTAB decide whether additional discovery is necessary in the interest of justice or supported by a good cause. Requests that are specific, narrowly tailored and not overly burdensome are most likely to be granted the additional discovery.


The PTAB does not consider evidence of non-obviousness as part of routine discovery. Instead, such evidence falls under additional discovery. Therefore, if a patent owner wishes to obtain such evidence, then a request for additional discovery needs to be submitted by the patent owner. The PTAB explains it will decide such requests on a case-by-case basis using the Garmin factors to assist in the determination. The PTAB will seek feedback as the case law further develops to determine whether a more specific rule will be needed. Infringement contentions or allegations will not be sufficient because such statements fail to explain whether the commercial success of the petitioner's product derives from the claimed feature.

Real party-in-interest

The PTAB will generally permit a patent owner to raise a real party-in-interest or privy challenge at any time during the post-grant proceeding. Concerning late challenges, the PTAB will decide on a case-by-case basis whether the lateness is uncalled for or prejudicial, including when such a challenge is in a request for additional discovery. The statute mandates that all real parties-in-interest be identified at the time of filing the petition. Therefore any change to correct the identification will effect the filing date of the petition. The ultimate burden of proof concerning the identification of all real parties-in-interest lies with the petitioner, because the petitioner is more likely than the patent owner to have access to evidence relevant to the issue whether all real parties-in-interest have been identified in the petition.

Multiple proceedings

The PTAB decided after reviewing the comments that no changes are needed concerning how the PTAB handles multiple proceedings. However, the PTAB agreed with commenters that the patent owner's preliminary response period may be altered when appropriate. The PTAB also agreed with commenters that the PTAB should consider whether a petitioner that filed a later petition on the same patent claims is amenable to joinder. In lieu of providing rigid rules concerning the propriety of a stay, transfer, consolidation or termination where multiple proceedings are directed to the same patent claims, the PTAB will allow a restrained evolution to develop on a case-by-case basis through its body of case law.

When considering whether to institute later-filed petitions on the same patent claims, the PTAB will follow its current and later-developed body of case law. Currently the PTAB is considers the following nonexclusive factors: (1) the degree of overlap between the prior art and arguments raised in the multiple petitions; (2) the identity of the petitioner in the later-filed proceeding; (3) whether the petitioner in the later-filed proceeding uses a prior decision on institution as a roadmap to refine and recycle arguments presented in an earlier-filed petition; (4) whether the circumstances surrounding the later-filed petition raises the specter of patent owner harassment; and (5) whether granting the later-filed petition is in the interests of justice.

Extension of one-year period to issue a final determination

The PTAB will strive to meet the one-year statutory deadline, and will only extend if the facts and circumstance warrant an extension.

Oral hearing

The PTAB will continue with its case-by-case practice when considering requests for live testimony at the oral hearing. There will be no change from the PTAB's current practice as to when rebuttal time is permitted and for whom. The PTAB's practice gives the party with the burden of proof on an issue an opportunity to rebut.

Modification to the rules is proposed concerning the exchange of demonstratives. The proposal requires the parties to exchange demonstratives seven business days before the final hearing date.

The PTAB will try to have all judges present during all sessions of multiple session final arguments, although schedule conflicts may prevent a judge from attending a session on a related case.

General topics

The PTAB has changed its procedure for determining the maximum length of petitions, patent owner's preliminary response and response to petition, and replies. The following limits are proposed:

  1. Petition requesting inter partes review: 14,000 words
  2. Petition requesting post-grant review: 18,700 words
  3. Petition requesting covered business method patent review: 18,700 words
  4. Petition requesting derivation proceeding: 14,000 words
  5. Motions (excluding motions to amend): 15 pages
  6. Motions to amend: 25 pages
  7. Word counts for a patent owner preliminary response to petition are the same as the word counts for the petition
  8. Word counts for a patent owner response to petition are the same as the word counts for the petition
  9. Page limits for oppositions are the same as those for corresponding motions
  10. Replies to patent owner responses to petitions: 5,600 words
  11. Replies to oppositions (excluding replies to oppositions to motions to amend): 5 pages
  12. Replies to oppositions to motions to amend: 12 pages

Given the proposal to switch the limit in length from pages to word count, the practice of not having argument in a claim chart is moot.

Rule 11-type certification

The PTAB proposes to amend 37 CFR § 42.11 to include a Rule 11-type certification for all papers filed with the PTAB. Thus, an attorney could be sanctioned for not performing an adequate investigation before submitting the paper to the PTAB.


The PTAB appears to be reacting to perceptions that it is too pro-petitioner. Given these proposed changes, as well as the PTAB's decision to maintain certain current practices without change after reviewing the comments, clients should consider submitting comments to the extent they disagree with that perception and the changes. We are available to advise on making comments, prior comments and comments to be submitted by the major IP organizations, including the Intellectual Property Owners Association, the American Intellectual Property Law Association and the American Bar Association.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
24 Oct 2017, Seminar, Washington, DC, United States

The Dentons Forum for Women Executives invites you to join us for a luncheon featuring guest speaker Liza Mundy, journalist and author. Ms. Mundy recently released her latest book, Code Girls, the riveting untold story of more than 10,000 spirited young American women who cracked German and Japanese codes to help win World War II.

27 Oct 2017, Seminar, New York, United States

Please join us for a milestone event, our 10th annual CLE Seminar for In-House Counsel.

1 Nov 2017, Seminar, Washington, DC, United States

Celebrate the 58th anniversary of Dentons' Government Contracts practice

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.