United States: The New AIA Rules May Help Patent Owners Avoid Trial

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply "to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office." The new rules apply to trial practice for inter partes review (IPR), post-grant review (PGR), covered business method patents (CBM), and derivation proceedings that implemented provisions of the AIA providing for trials before the USPTO.

The new rules follow months of the USPTO listening to and reading feedback from the public and patent professionals, and impact four primary matters:

  • Evidence submitted with a patent owner's preliminary response
  • Certification by counsel
  • The claim construction standard for patents that will expire in 18 months or less
  • Word count limits for major briefs

The amendment permitting the patent owner to submit written testimony with the preliminary response seems to be the most anticipated of the amendments because it offers the patent owner an additional way to avoid institution of an AIA trial. With the high rate of invalidation at AIA trials, this could be a significant protection for patent owners.

Patent Owner's Evidence With Preliminary Response

The IPR procedure was enacted by Congress as part of the AIA in 2012. The AIA was, in part, a response to the perception that low-quality patents were being used by non-practicing entities as a way to squeeze money out of manufacturers. IPRs quickly became a popular method for challenging a patent because a successful IPR often resulted in some or all of the claims of the patent being invalidated. As of the end of January, 2016, at least some claims were invalidated in approximately 86 percent of the completed IPRs (97 percent of CBMs resulted in at least some claims being found unpatentable).

In August 2015, the USPTO Director's Blog saw the large number of filings and the invalidation results as a positive thing:

Taken together, the demand for these new proceedings (as reflected by the large number of filings) and the results we are seeing at the CAFC appear to indicate that the PTAB proceedings are succeeding in their Congressional mandate to effectively and efficiently resolve patent validity disputes, while providing timely, low-cost alternatives to district court litigation.

Patent owners, however, saw it differently. Because of the high percentage of patents invalidated by IPRs, some referred to IPRs as the place where patents go to die. As Randall Rader, once chief judge of the Federal Circuit, put it, the judges of the PTAB are "acting as death squads, killing property rights." Tony Dutra, Rader Regrets CLS Bank Impasse, Comments on Latest Patent Reform Bill, BNA Pat. Trademark & Copyright L. Daily, Oct. 29, 2013. And as stated by Senator Chris Coons, keynote speaker at a June 2015 event sponsored by Duke Law Center for Innovation Policy to examine the impact of the AIA review proceedings, the high percentage of claims invalidated by the AIA "should give us real pause" and could chill technology investment:

It seems hard to imagine that we would expect anyone but the wildest optimist to invest when a patent only has a 16 percent chance of being held valid post-grant review proceedings ... So my fear is that many investors, if this kill rate continues going forward, will lose trust in the strength of American patents.

Others saw it differently. Rochelle Cooper Dreyfuss, the Pauline Newman Professor of Law at New York University School of Law, saw the high invalidation rate as evidence of self-selection by those challenging patents and by the procedure used for decisions to institute IPR:

Selection effects must also be considered. Unauthorized users have three shots at retaining freedom to operate: it is possible that the patent holder will fail to sue; that if the patent holder does sue, the patent will be invalidated; or that in the suit, the user's activity will be found noninfringing. At the PTAB, there is only one possibility: invalidation. Accordingly, challengers are likely to use these proceedings only when the case for invalidity is extremely strong.

Cooper Dreyfuss, Rochelle. Giving the Federal Circuit a Run for its Money: Challenging Patents in the PTAB, Notre Dame Law Review, p. 257, vol. 91, 2015, NYU School of Law.

Because the panel that decides whether to institute also decides the case on the merits, a strong correlation is to be expected. This is especially so because the institution decisions are far from pro forma: they are often as long as the merits decision, cover the same issues (claim construction is often central), and are as thoughtful and probing of the arguments as the decisions on the merits.

Id. at 252.

Regardless of the reason behind the high incidence of invalidity determinations by the PTAB in AIA proceedings, the amendment that permits the patent holder to file new testimonial evidence with its preliminary response is generally seen as helpful to patent owners, as it provides them with another way to avoid institution of an IPR.

The evidence submitted at this early stage relates to whether or not a trial should be instituted. In part because there is generally no discovery prior to the decision on institution, the amendments provide that any genuine issue of material fact created by testimonial evidence will be resolved in favor of the petitioner for the purpose of determining whether to institute a trial. Noting that not every factual contradiction rises to the level of a genuine issue of material fact that would preclude a decision on the factual issue of whether the petitioner has met the threshold burden for institution of a trial, the PTO stated that the presumption in favor of the petitioner only applies when a genuine issue of material fact related to the determination of whether to institute is created by the patent owner's testimonial evidence:

If a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of petitioner solely for institution purposes so that petitioner will have an opportunity to cross-examine the declarant during the trial.

There is no limit placed on the number of declarations that may be submitted, and there is no adverse inference drawn if the patent owner does not submit such a declaration. The testimonial evidence submitted by the patent owner with its preliminary response is not restricted by scope. Additionally, because it is filed before the decision on institution is made, it is generally not subject to cross-examination. However, in some circumstances, the panel is able to exercise its discretion to authorize some limited discovery, including cross-examination of witnesses, prior to a decision on institution. Similarly, when the patent owner introduces testimony prior to institution, the panel may exercise its discretion to permit the filing of a reply, where that is appropriate considering the specific facts of the case.

The testimony used for the institution decision will not always relate to the issues present once the trial is instituted. If the patent owner chooses to withdraw the pre-institution testimony at the trial stage, the use of cross-examination will only be permitted if the cross-examination falls within the scope of permitted additional discovery.

Certification by Counsel

The amendments provide a Fed. R. Civ. P. 11-type certification for all papers filed in PTAB proceedings. The certification confirms that:

  • The paper was not filed for an improper purpose
  • The legal contentions in the paper are supported by existing law or a non-frivolous argument for a modification of existing law
  • The allegations and denials in the paper have, or are likely to have, evidentiary support

These amendments relate to the duty of candor owed to the PTO, and provide more detail on the PTO's expectations for counsel and parties participating in AIA trials. The amendments, also provide a procedure for sanctions that did not exist prior to the amendments. Under the new rules, sanctions can be requested by the opposing party, or initiated by the PTAB.
Where requested by a party, the amendment requires service of a proposed motion on the other party before seeking authorization to file a motion for sanctions, and provides 21 days to take corrective action. The receiving party then has an opportunity to remedy the actions underlying the motion, or to challenge the motion.

While a party can plead or aver a right to sanctions based on contentions or denials likely to have evidentiary support after a reasonable opportunity for further investigation or discovery, that is considered an exception to the requirement that the petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of f the evidence including material facts, and the governing law, rules and precedent.

These amendments also eliminate sanctions against law firms, but keep them in place against practitioners and parties. Whether or not sanctions are to be imposed is to be determined on a case-by-case basis, and future published decisions will provide guidance in this regard.

Claim Construction Standard

The claim construction standard for PTAB trials remains "the broadest reasonable interpretation" for most proceedings. However, when the patent at issue expires within 18 months from the entry of the Notice of Filing Date Accorded to Petition, either party may request, by motion, a Phillips-type (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc) ) construction. This triggers a conference call with the panel to discuss the request to resolve whether such a motion is appropriate under the circumstances, and whether briefing is needed for the parties to address the proposed construction standard. It is left to the discretion of the panel to determine whether or not the Phillips-type construction should apply. That determination should be made prior to institution, and ideally, before the patent owner preliminary response deadline has passed.

The PTO acknowledges that this provides different standards for claim construction in different situations, but the different standards are appropriate. The use of the broadest reasonable interpretation claim construction standard assures patent quality, and is proper where there is an ability to clarify claim scope and amend the claims. The use of the Phillips-type claim construction is appropriate where there is no opportunity to amend the claims so that the claims can be construed to preserve validity, if possible.

Word Count Limits

It has been said that a picture is worth a thousand words. With the amendment to the rules that provides an option of a page limit or a word count limit, parties no longer need to decide whether or not to include a drawing or picture in a brief, or to use that space for words. This is seen as a way to encourage parties to use helpful drawings and diagrams. The new word count limits apply to petitions, patent owner preliminary responses, patent owner responses, and petitioner's replies.

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.

Similar Articles
Relevancy Powered by MondaqAI
Shearman & Sterling LLP
Haug Partners
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Shearman & Sterling LLP
Haug Partners
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions