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
26 Sep 2018, Conference, New York, United States

Dentons is delighted to support a global IT services and consulting firm Miratech as an event host partner at their annual conference called M-Force18 New York on September 27th. The event will be held at Dentons New York office in the heart of Midtown Manhattan, opposite Rockefeller Center.

2 Oct 2018, Seminar, Dallas, United States

We are pleased to offer a program of five sessions designed specifically for in-house counsel. Topics will include:

  • In-house corporate ethical issues
  • What recent Supreme Court decisions mean for business
  • Keeping lawyers out of your benefit plans
  • Litigation tactics for in-house counsel
  • Employment issues in the age of #MeToo
Similar Articles
Relevancy Powered by MondaqAI
Haug Partners
Hunton Andrews Kurth LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Haug Partners
Hunton Andrews Kurth LLP
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