Proposed changes to rules for proceedings conducted by the
Patent Trial and Appeal Board (PTAB) were published August 20, 2015
in the Federal Register1. The Proposed Rule may be found
here.
Perhaps the most significant proposed change is the allowance of
"new testimonial evidence" to accompany a Patent Owner
Preliminary Response. PTAB has previously defined "new"
testimony evidence as testimony evidence that was taken
specifically for the purposes of the proceeding at issue, but PTAB
also typically considers whether the evidence is dated before or
after the petition was filed.2,3
Another proposed amendment provides that if the patent owner
submits supporting evidence with its preliminary response, the
petitioner may seek leave to file a reply to the preliminary
response. For purposes of deciding whether to institute review,
supporting evidence concerning disputed material will be viewed in
the light most favorable to the petitioner.
For specific documents, word count limits are proposed to replace
page limits. For example, the proposed word limits for a Petition
requesting IPR, a Patent Owner Preliminary Response to a petition,
and a Patent Owner Response to a petition are each 14,000 words.
The rationale is to prevent "improper" use of claim
charts to present additional arguments while circumventing page
limits. The new rules would allow arguments in claim charts and
thereby obviate preliminary review of claim charts for argument
content, such that fewer petitions would be found
noncompliant.
A new certification requirement, similar to Rule 11 for Federal
district court litigation related to the duty of candor, is also
proposed. This amendment would revise 37 CFR §42.11 to include
a requirement for representations to the Board, and would provide
for sanctions for violating this requirement.
The U.S. Patent and Trademark Office invites comment on the
proposed revisions.
Footnotes
1 80 Fed. Reg. 50720 (Aug. 20, 2015).
2 Anova Food LLC v. Leo Sandau et al, IPR2013-00114, Paper
11 (June 25, 2013).
3 Amneal Pharma., LLC v. Endo Pharma., Inc.,
IPR2014-01365, Paper 11 (Nov. 14, 2014).
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