Think
Forward

Alert
USPTO Issues New PTAB Rules
December 11, 2020

On December 8, 2020, the United States Patent and Trademark Office (“USPTO”) issued final rules revising the Patent Trial and Appeal Board’s (“PTAB” or “Board”) Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence (see 85 Fed. Reg. 79120).  The effective date for these revised rules is January 8, 2021, and applies to all inter partes review (“IPR”), post grant review (“PGR”), and the transitional program for covered business method patents (“CBM”) petitions filed on or after that date.

The USPTO summarized the revised rules of practice as follows:

  • In light of SAS,[[1]] the Office provided guidance that, if the Board institutes a trial under 35 U.S.C. 314 or 324, the Board will institute on all claims and all grounds included in a petition of an IPR, PGR, or CBM.  To implement this practice in the regulation, this final rule revises the rules of practice for instituting an IPR, PGR, or CBM to require institution on either all challenged claims (and all of the grounds) presented in a petition or none.  Under the amended rule, therefore, in all pending IPR, PGR, and CBM proceedings before the Office, the Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.
  • The second change is conforming the rules to certain standard practices before the PTAB in IPR, PGR, and CBM proceedings.  Specifically, this final rule amends the rules to set forth the briefing requirements of sur-replies to principal briefs and to provide that a reply and a patent owner response may respond to a decision to institute.
  • Finally, this final rule amends the rules to eliminate, when deciding whether to institute an IPR, PGR, or CBM review, the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response.  As with all other evidentiary questions at the institution phase, the Board will consider all evidence to determine whether the petitioner has met the applicable standard for institution of the proceeding.

See 85 Fed. Reg. 79120.

The first two rule changes are primarily the codification of existing PTAB practice, and therefore should have little impact on a petitioner’s decision to file a post grant petition, and a party’s decision on whether to file a sur-reply.  Specifically, it has already been the PTAB’s practice for more than two years that if a trial is instituted, the PTAB will institute on all claims and all grounds included in a petition.  Similarly, PTAB practice already permits sur-replies to principal briefs; however, the revised rules provide further guidance on this front.  Specifically, the revised rules indicate that sur-replies “may only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony” and “may also address the institution decision if necessary to respond to the petitioner’s reply.”  Id. at 79121.  Furthermore, the revised rules specify that a “sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”  Id.  According to the USPTO, “[t]his sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony.”  Id.

With respect to the final rule change, to eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response when deciding whether to institute review, the USPTO acknowledged that it received a mix of public comments both in favor of and opposed to this rule change.  The USPTO further noted that the current presumption “in favor of the petitioner where there is a genuine issue dispute of material fact created by testimonial evidence in a patent owner response has created confusion as to how other evidence should be weighed.”  85 Fed. Reg. 79125 (Cmt. 13).  In deciding to modify this rule, the USPTO explained that the change was made to “remove[ ] any bias or appearance of bias in favor of petitioner, and provide[ ] a balanced approach to ensure that all testimonial evidence submitted by the parties is fairly considered,” remove any disincentive of a patent owner “to submit pre-institution testimony that might, under the presumption, create an issue of material fact,” and confirm “that no presumption applies in favor of institution regardless of the existence or nature of a factual dispute in the pre-institution record, and regardless of the type of evidence, testimonial or otherwise.”  Id. (Cmts. 13 and 14).  The USPTO noted that under this revised rule, “any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence.”  Id. at 79122.

In closing, these rule changes revise the rules of practice to: (1) conform to the practice for instituting review on all challenged claims or none in accordance with U.S. Supreme Court’s SAS decision, (2) conform to the current practice of providing sur-replies to principal briefs and providing that a reply or patent owner response may respond to a decision on institution, and (3) eliminate the presumption that a genuine issue of material fact created by submission of testimonial evidence in a patent owner’s response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute of review. 


[1] SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (finding that a decision to institute an IPR under 35 U.S.C. 314 many not institute on fewer than all claims challenged in a petition.)

Forward Thinkers
RELATED PRACTICE GROUPS