April 18, 2016

“5 Things You Should Know About the PTAB’s New Rules Governing Post Grant Administrative Trials,” IP Watchdog, April 18, 2016

By Matthew L. Cutler, Principal

Disappointing some (i.e., Patent Owners) who were looking for a more significant changes to the rules governing inter partes review, post grant review, and/or covered business method review, on April 1, 2016, the Patent Office issued its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. About one year earlier, the Office hinted at the possibility of more sweeping proposals for change, but many of the more major proposals were not implemented and only more incremental change was adopted. Here are the five things every Patent Owner and Petitioner must know about the new ground rules governing the most seismic change in patent law in several generations – post grant administrative trials.

1. Expiring Patents May Not Be Subject to the Broadest Reasonable Interpretation Claim Construction Standard.

As we await the Supreme Court’s decision in In re Cuozzo Speed Techs., LLC, where it will decide whether the Office has been properly applying the Broadest Reasonable Interpretation (BRI) to post grant administrative trials, or whether it should have been applying a Phillips-type claim construction standard, the Office has implemented a rule that, for patents that will expire before the end of any trial, a Phillips-type construction can be implemented. 37 CFR §42.100 is amended to state that, if either party certifies that a patent will expire within 18 months from the petition being granted a filing date, it may be appropriate to treat the claims of that patent pursuant to a Phillips-type standard. If your post grant proceeding is directed to an old patent, keep in mind this opportunity to argue claim construction pursuant to Phillips, instead of BRI.

2. Patent Owner May Rely on Witness Testimony in its Patent Owner Preliminary Response.

Patent Owners often felt as if they were fighting with one hand tied behind their backs during the preliminary phase of a post grant proceeding because the Petition often contains testimonial evidence, but the Patent Owner Preliminary Response (POPR) was expressly required not to contain any such testimony. Now, 37 CFR §42.107 has been amended to eliminate the prohibition against presenting new testimony in a POPR. This change loosens the knot tying Patent Owners hand, but does not eliminate it entirely. While the Board can consider this testimony filed with the POPR, if a question of fact is created by such testimony…

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