April 1, 2015

PTO Previews Changes to Inter Partes Review Practice

By Matthew L. Cutler, Principal

Justified or not, there has been a significant and growing chorus of criticism regarding the results of about two-and-one-half years of Inter Partes Review practice before the PTAB. As our soon-to-be-released IPR Report (Volume 9) will show, about 85% of the claims that are addressed in a Final Written Decision are ultimately cancelled.

In response to this criticism, in June 2014, the US Patent and Trademark Office solicited input regarding how the IPR process was working. On March 30th, the PTO announced, via Director Lee’s blog, that changes are coming. While the blog entry merely highlighted some of the changes that will be coming, it is clear that some of the contemplated changes can be significant. In general, the fixes are to come in three phases – the first to be implemented immediately, and the others to be phased in over time.

First Rule Package – Immediate Quick-Fixes (to be implemented in a revised rule package to come, but implemented in scheduling orders starting immediately):

  1. Page Limit for Motions to Amend increased from 15 to 25 pages (and claims to be placed in an appendix instead of the body of the motion); and
  2. Page Limit for Petitioner Reply Brief increased from 15 to 25 pages.

Second Rule Package (mere considerations at this time):

  1. Further modifications to the Motion to Amend process, including
    1. That a motion for a substitutionary amendment will always be allowed to come before the Board for consideration, and
    2. For the amendment to result in the issuance of amended claims, the Patent Owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.
  2. Adjustments to the evidence that can be provided in the Patent Owner Preliminary Response;
  3. Clarification of the claim construction standard as applied to expired patents;
  4. Adjustments to the scope of additional discovery;
  5. How to handle multiple proceedings before the Office involving the same patent;
  6. Use of live testimony at oral hearings, and
  7. Whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Third Rule Package (potential changes via amendment to the Trial Practice Guide):

  1. Emphasize the availability of live testimony;
  2. Emphasize the importance of real party-in-interest discovery as to determinations of standing and later estoppel consequences; and
  3. Pilot program whereby a single judge would handle the institution decision and then two new judges would be added to the panel only when and if a trial is instituted to serve as “fresh eyes.”