United States: PTAB Rule Changes Bring Few But Important Changes To The Proceedings

In its eagerly awaited final rules1, the Patent Trial and Appeal Board (PTAB) largely rebuffed calls for change and clarity, in favor of a flexible common law approach. Over the past twenty-one months, the public provided many suggestions in answer to the Patent and Trademark Office's (PTO) five requests for comments concerning AIA trials, including inter partes review, post-grant review, and the transitional program for covered business methods.2 Two of the more significant changes made include establishing a procedure for applying a Phillips claim construction to soon-to-expire patents, and the ability to submit new testimonial evidence with the patent owner's preliminary response.

The final rules track the same format as the October 2015 proposed rules3 and address several areas:

  1. Claim construction standard
  2. Patent owner's preliminary response
  3. Rule 11-type certification
  4. General topics — from page limits to word counts
  5. Discovery

    • Additional discovery
    • Additional discovery on evidence relating to obviousness
    • Real party-in-interest
  6. Multiple proceedings
  7. Extension of one-year period to issue a final determination
  8. Live testimony in an oral hearing
  9. Patent owner's motions to amend
  10. Recognizing privilege for communications with domestic patent agents and foreign patent practitioners

In the future, the PTO will also amend its Office Patent Trial Practice Guide to comport with these rules changes and to reflect how the PTAB handles additional discovery, live testimony, and confidential information. Deputy Director Slifer also recently stated that the PTO will "continue to refine the rules governing AIA trials going forward to ensure fairness and efficiency while meeting all congressional mandates." So expect more changes in the future.4

The significant changes:

1. Claim construction

On the hot-button issue of claim construction, the PTO held firm in its position that the broadest reasonable interpretation is the appropriate standard to apply to proceedings in which the patent owner may amend the claims. The PTO did, however, provide some clarity as to when the PTAB should apply the Phillips claim construction standard. Previously, the rules allowed using the Phillips standard for expired patents, but left open the issue for patents that might expire during a proceeding. To clarify that issue, the PTAB will allow either party to move to use the Phillips standard, if the party certifies that the patent will expire within eighteen months after filing the petition. The PTAB leaves open the possibility that if the PTAB grants the motion, the petitioner may get a chance to file a paper concerning how the changed standard affects the analysis.

2. Patent owner's preliminary response

The most significant change proposed last October was to give the patent owner the opportunity to submit new testimonial evidence with its preliminary response. The final rules did not modify the proposed rule, so patent owners will now have this ability. The usefulness of this opportunity is unclear, however, because "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." Final rules at 18755. This statement is contentious because some feel that patent owners are already at a severe disadvantage before the PTAB, so giving the petitioner a benefit of the doubt fails to address the perceived disadvantage. The PTO and others rationalize siding with the petitioner at institution because the patent owner's new testimonial evidence is uncontested.

Another interesting aspect is that the PTO codified the petitioner's ability to request a reply to the preliminary response. This option was already available, but the PTAB usually denied such requests. By codifying that ability, perhaps the PTAB will now authorize replies more frequently, especially when patent owners submit new testimonial evidence. Patent owners should carefully consider this possibility before submitting new testimonial evidence – the harm of providing evidence early and giving the petitioner another brief might outweigh the benefits of filing new testimonial evidence with the preliminary response.

3. Rule 11-type certification

The new certification rule requires parties to agree that they are not presenting papers for an "improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office," and that their arguments are not frivolous.5 This should not affect most parties, but it might affect petitioners motivated to manipulate stock prices or extort patent owners who succeeded at trial. For instance, a consortium, famously including hedge-fund manager Kyle Bass, has achieved limited success by challenging patents owned by pharmaceutical companies, while holding investments that would appreciate due to their challenges. Other petitioners have challenged patents related to significant damages awards, apparently hoping to seek some compensation due to the desire to settle, a so-called "reverse troll" situation. Only time will tell whether this new requirement will curb that behavior.

4. General topics — from page limits to word counts

Page limits generally have been removed, and now the petition, responses and replies are subject to word counts:

  • Petition requesting inter partes review: 14,000 words
  • Petition requesting post-grant review: 18,700 words
  • Petition requesting covered business method patent review: 18,700 words
  • Petition requesting derivation proceedings: 14,000 words
  • Motions (excluding motions to amend): 15 pages
  • Motions to Amend: 25 pages

These limits do not include a table of contents, a table of authorities, a certificate of service or word count, exhibits, appendices, mandatory notices, or claim listings.

Some comments received by the PTO in response to the proposed rules argued that these word counts were too low. The PTO provided no rationale for the low word counts, which a small sample of petitions demonstrates are likely lower than today's average word counts. The limited word count will further constrict petitioners and patent owners when presenting their arguments, likely leading to more petitions being filed to include more arguments, as the PTAB nearly always denies motions for additional pages.

Discussion and clarification, but no changes:

1. Discovery — continued reliance on Garmin factors

The PTO maintains that the Garmin factors6 provide "a flexible approach to address each motion's unique set of facts." Final rules at 18757. Therefore, the PTO made no change.

2. Multiple proceedings dealt with on a case-by-case basis

Similarly, the PTO believes "the current rules provide sufficient flexibility to address the unique factual scenarios presented" with multiple proceedings. To date, the PTAB has denied requests to merge reexaminations and AIA trials, and takes a case-by-case approach when determining whether to stay parallel proceedings. This leaves parties with little certainty as to how the PTAB will treat individual cases. Parties must therefore understand how to present their positions in a way that the PTAB will find persuasive.

Despite the lack of clarity provided in the final rules on these issues, the PTO stated that it will release a revised Office Patent Trial Practice Guide that might address both of these issues. Hopefully, that guidance will reduce uncertainty and provide more consistency between panels on how they treat discovery requests and the relationship between multiple proceedings, e.g., whether to stay, transfer, consolidate, or terminate a parallel proceeding.

3. Extension of one-year period to issue a final determination only where good and sufficient cause has been demonstrated

Impressively, the PTAB has not missed its one-year deadline in the three-and-a-half years it has been handling AIA trials. Some urged the PTAB to consider extending the deadline, as it is allowed to do, in some circumstances, such as when parties might settle, when there is a parallel proceeding, or when the one-year schedule is overly burdensome on a party. The PTO stated that it would consider the suggestions and possibly provide updates to the "Office Patent Trial Practice Guide to provide examples where good cause may be shown for extension of the one-year period to issue a final determination." Final rules at 18760.

Interestingly, while most AIA trials take roughly eighteen months from filing to completion (six months before institution and one year after), the PTAB sometimes takes longer to complete trials. The PTAB is able to do this by extending the deadline for patent owner preliminary responses beyond the typical three-month deadline. In doing so, the PTAB provides the patent owner more time and gives itself more time to issue a decision on institution. This happens sometimes when petitioners file many petitions against many patents owned by the same patent owner. This is one way the PTAB is able to manage its docket without moving its statutory deadlines.

4. Live testimony in an oral hearing, no change

Currently the PTAB routinely denies requests for live testimony at the oral hearing. This practice will not change.

5. Patent owner's motions to amend remains the same

The controversy over the PTAB's habit for denying motions to amend is second only to the BRI v. Phillips debate. Here, too, the PTO decided to make no changes, but referred the public to its representative decision in MasterImage 3D, Inc. v. RealD Inc., in which the PTAB clarified that patent owners must only demonstrate patentability over the prior art that they know of—excluding prior art that they do not know of.7

6. Recognizing privilege for communications with domestic patent agents and foreign patent practitioners

While not taking a position on the issue of privileged communications with non-lawyer patent agents, the PTO seemed to agree that communications with patent agents in the context of AIA trials should be privileged. This is supported by the decision In Re Queen's University at Kingston; the majority opinion was authored by Judge O'Malley and joined by Judge Lourie. The majority turned to Rule 501 of the Federal Rules of Evidence, which sets forth in general terms what is privileged. The common law — as interpreted by United States courts in the light of reason and experience — governs a claim of privilege unless any of the following provides otherwise: the United States Constitution; a federal statute; or rules prescribed by the Supreme Court. But in a civil case, state law governs privilege regarding a claim or defense for which state law supplies the rule of decision. The majority recognized that "there is a presumption against the recognition of new privileges," but found enough support in the Patent Act (e.g., 35 USC § 2(b)(2)(D)) and Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), to warrant recognition of a limited patent agent privilege.


The final rules basically tweak the proposed rules and, except for the new testimonial evidence with the preliminary response, will have little effect on most AIA trials. Parties should be cognizant of the new word-count limits, but current practice before the PTAB will not change much as a result of these amendments.


1 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 81 FR 18750 (April 1, 2016) ( https://www.gpo.gov/fdsys/pkg/FR-2016-04-01/pdf/2016-07381.pdf) ("final rules").

2 Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 79 FR 36474 ( https://www.federalregister.gov/articles/2014/06/27/2014-15171/request-for-comments-on-trial-proceedings-under-the-america-invents-act-before-the-patent-trial-and);

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board 80 FR 28561–28566, May 19, 2015 ( http://www.uspto.gov/sites/default/files/documents/80fr28561.pdf);

Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, 80 FR 51540–51542 ( https://www.federalregister.gov/articles/2015/08/25/2015-21052/request-for-comments-on-a-proposed-pilot-program-exploring-an-alternative-approach-to-institution); and

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 FR 50719– 50747, October 19, 2015 ( https://www.federalregister.gov/articles/2015/08/20/2015-20227/amendments-to-the-rules-of-practice-for-trials-before-the-patent-trial-and-appeal-board).

3 See, US Patent Trial and Appeal Board proposes rule changes to AIA trials ( http://www.dentons.com/en/insights/alerts/2015/august/21/us-patent-trial-and-appeal-board-proposes-rule-changes-to-aia-trials).

4 http://www.uspto.gov/blog/director/entry/ptab_issues_final_rules_for\.

5 37 C.F.R. § 11.18(a) (invoked by 37 C.F.R. § 42.11).

6 Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative).

7 IPR2015-00040, Paper 42, July 15, 2015 ( http://www.uspto.gov/sites/default/files/documents/ipr2015-00040%20paper%2047%2020150715.pdf).

Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com.

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.