Today, the PTO’s Patent Trial and Appeal Board (PTAB) issued a final rule related to trial proceedings under the America Invents Act.  The final rule goes into effect 30 days after publication in the Federal Register (scheduled for December 9, 2020); it makes changes to institution practice and sur-replies, and eliminates an evidentiary presumption in favor of a petitioner on certain institution-related fact issues.

The PTAB’s final rule is entitled “PTAB 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.”  The rule makes three changes:

  1. Revises the rules of practice for instituting review to implement the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), which held that when the PTAB institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. Consistent with SAS, the Office is also revising the rules for instituting a review, if at all, on all grounds of unpatentability for the challenged claims that are asserted in a petition. See pg. 3 (“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.”)
  2. Revises the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a reply and a patent owner response may respond to a decision on institution. See pg. 3 (“[T]his 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 on institution.”).
  3. Amends the rules to eliminate the presumption that a genuine issue of material fact created by the patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.  See pg. 3 (“[T]his 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.”). Notably, the change applying to the evidentiary presumption will not be retroactive. See pg. 30 (“The change to eliminate the presumption will apply only to petitions filed on or after the effective date of the rule.”).

Specific regulations affected by the rule are set out in detail, and they include the following:

  • 37 CFR 42.23 (Oppositions and replies.) (see ppg. 9-10)
  • 37 CFR 42.24 (Type-volume or page-limits for petitions, motions, oppositions, and replies.) (see pg. 10)
  • 37 CFR 42.71 (Decision on petitions or motions.) (see pg. 10)
  • 37 CFR 42.108 and –208 (Institution of inter partes review./Institution of post-grant review.) (see pg. 11)
  • 37 CFR 42.120 and –220 (Patent owner response.) (see ppg. 11-12)

Comments and responses regarding the institution rule can be found on ppg. 12-18 of the PDF; regarding sur-replies on ppg. 18-20; and regarding the presumption, on ppg. 21-30.

Complete text of the revised regulations can be found at ppg. 37-40.