USPTO Considering Changes to PTAB Rules

At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

The online webinar was not the first time that the PTAB and USPTO have worked to gain feedback from various stakeholders on the progress of AIA trials. Earlier in spring and early summer of this year, representatives of the PTAB attended eight roundtable discussions in cities across the United States. Although one goal of these meetings was to educate the public about AIA trial proceedings, the PTAB was also interested in collecting feedback from those involved in trial proceedings. Of great importance to the board is methods of making these trial proceedings more effective at challenging patent validity than filing cases in district courts; encouraging the use of these type of legal proceedings is a major goal of the law.

Under the America Invents Act, it is possible to challenge the validity of a patent after its issuance. Some have argued in the past that allowing for third-party input in this way could improve patent quality, even after a patent is issued. However, with litigation involving patent validity as such a major issue in recent weeks, it’s understandable why the PTAB would reach out to stakeholders and see if the rules were serving them well.

According to Judge Boalick in comments given during a Q&A session, the PTAB is handling a large number of filings, but he believes that they’re being well handled in a timely fashion. The board received 190 petitions during the month of June, and were on track for anywhere between 130 and 150 petitions by the end of the month of July. Even with that number of proceedings, Boalick estimated that the PTAB is only utilizing about 40 percent of its judicial resources, including personnel, on these trials. “We have enough to meet the current demand,” said Boalick.

However, the USPTO is seeking to hire personnel to build additional resources in handling AIA trials. Openings are available in offices across the country, according to Boalick. The application deadline for those employment expired July 31, but Boalick reassured those watching the webcast that announcements on further job openings would be available in the coming weeks.



Further Questions on AIA Trials

Some questions were handled early in the webinar regarding various aspects of the trial proceedings. One question was asked pertaining to the USPTO’s Patent Review Processing System (PRPS) as to whether or not the e-filing and online case management system, developed for AIA trials, will be improved. Although no major changes to PRPS are planned, the agency is looking to replace it during the 2016 fiscal year with a different platform that builds upon the capabilities of PRPS. What those additional features might be wasn’t discussed.

Various legal motions were also on the minds of those responding to the webinar, especially motions to dismiss. One question was presented as to whether there was any point at which a motion to dismiss would definitely be granted if filed. Although Judge Boalick couldn’t say for certain that there was a threshold for this under which a motion like this wouldn’t be granted, but the PTAB would take into account how far into court proceedings that the trial has been able to progress, and the greater the time investment, the likelier that a motion to dismiss wouldn’t be granted.

Some were confused about how additional discovery was to be handled in AIA trials as opposed to district court trials. One respondent asking a question had overheard previous discussions among attorneys involved in AIA trials in which they had recommended obtaining discovery through district court proceedings and then introduce it into an AIA trial. “By the nature of the America Invents Act, there’s a higher standard for discovery than in district courts,” said Boalick. “If you have [discovered information], that’s great, but in order for AIA trials to be faster and less expensive than district courts, we can’t have that district court discovery which is very expensive.”

Patent owner preliminary responses to petitions were another topic of focus among webinar participants. It seemed as though some people were confused as to the ability of a patent owner to enter new evidence into a trial by filing such a preliminary response. “In the battle of experts, if that’s what it comes down to,” said Boalick, “there’s no chance to cross-examine either expert.” Although petitioners are allowed to enter evidence, restrictions against new evidence filed by patent owners during a preliminary response seems designed to prevent what Boalick saw as a possible “trial within a trial” from developing.

Clarity on motions to amend were also sought by respondents. Boalick quickly pointed out that there were online resources available through the USPTO designed to give interested parties all the information they need in order to file a successful motion to amend. Boalick did address one misconception about a patent owner’s responsibilities in presenting prior art information. “It just needs to address what they know from the vantage point of someone of ordinary skill,” said Boalick. The patent owner is not enforced to account for all prior art, both known and unknown. Boalick added, “I don’t think that the board has seen many efforts… to show why a proposed claim is non-obvious.”


Questions for Public Comment

Again, this latest webinar is simply one more step in recent USPTO efforts to gain insight into whether AIA is providing the benefits it was designed for, or whether the entire process has proved too cumbersome to those involved. To that end, Judge Boalick offered 17 different questions on which the PTAB is actively seeking comments, which come directly from a request for comments filed by the USPTO in late June of this year:

  1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
  2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?
  3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?
  4. Under what circumstances should the Board permit discovery of evidence of non-obviousness held by the petitioner, for example, evidence of commercial success for a product of the petitioner? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?
  5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?
  6. Are the factors enumerated in the Board’s decision in Garmin v. Cuozzo, IPR 2012,00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?
  7. How should multiple proceedings before the USPTO involving the same patent be coordinated? (Multiple proceedings before the USPTO include, for example: (i) Two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.)
  8. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed?
  9. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted?
  10. Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or a reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted
  11. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be consolidated with an AIA trial?
  12. How should consolidated proceedings be handled before the USPTO? (Consolidated proceedings include, for example: (i) Consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding.
  13. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a reissue proceeding?
  14. What circumstances should constitute a finding of good cause to extend the 1-year period for the Board to issue a final determination in an AIA trial?
  15. Under what circumstances, if any, should live testimony be permitted at the oral hearing?
  16. What changes, if any, should be made to the format of the oral hearing?
  17. What other changes can and should be made in AIA trial proceedings? For example, should changes be made to the Board’s approach to instituting petitions, page limits, or request for rehearing practice?

Anyone wishing to file a formal comment on any of these questions can leave one through the Federal Register website linked at the top of this section, or they may e-mail [email protected]. Comments on these questions were originally to be accepted through September 16, 2014, but the deadline has been extended to October 16, 2014.


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