[Federal Register Volume 77, Number 27 (Thursday, February 9, 2012)]
[Proposed Rules]
[Pages 6868-6879]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-2523]
[[Page 6867]]
Vol. 77
Thursday,
No. 27
February 9, 2012
Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 42 and 90
Practice Guide for Proposed Trial Rules and Rules of Practice for
Trials Before the Patent Trial and Appeal Board and Judicial Review of
Patent Trial and Appeal Board Decisions; Proposed Rules
Federal Register / Vol. 77, No. 27 / Thursday, February 9, 2012 /
Proposed Rules
[[Page 6868]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No.: PTO-P-2011-0094]
Practice Guide for Proposed Trial Rules
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for Comments.
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SUMMARY: The Leahy-Smith America Invents Act establishes several new
trial proceedings to be conducted by the Patent Trial and Appeal Board
(Board) including inter partes review, post-grant review, the
transitional program for covered business method patents, and
derivation proceedings. The Leahy-Smith America Invents Act also
requires the United States Patent and Trademark Office (Office or
USPTO) to promulgate rules specific to each proceeding. In separate
rulemakings elsewhere in this issue and in the February 10, 2012, issue
of the Federal Register, the Office proposes rules relating to Board
trial practice for the new proceedings. The Office publishes in this
document a practice guide for the proposed trial rules to advise the
public on the general framework of the proposed regulations, including
the structure and times for taking action in each of the new
proceedings.
DATES: Written comments must be received on or before April 9, 2012 to
ensure consideration.
ADDRESSES: Comments on the practice guide should be sent by electronic
mail message over the Internet addressed to: [email protected]. Comments may also be submitted by postal mail
addressed to: Mail Stop Patent Board, Director of the United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of ``Lead Judge Michael Tierney, Practice Guide
for Patent Proposed Trial Rules.'' Comments on the proposed rules
should be directed to the addresses provided in the notices of proposed
rulemaking.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Board of Patent Appeals and Interferences, by telephone
at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary
The proposed regulations lay out a framework for conducting the
proceedings aimed at streamlining and converging the issues for
decision. In doing so, the Office's goal is to conduct proceedings in a
timely, fair and efficient manner. Further, the Office designed the
proceedings to allow each party to determine the preferred manner of
putting forward its case, subject to the disinterested guidance of
judges who determine the needs of a particular case through procedural
and substantive rulings throughout the proceedings.
Background
The Leahy-Smith America Invents Act (AIA) establishes several new
trial proceedings to be conducted by the Board including: (1) Inter
partes review (IPR); (2) post-grant review (PGR); (3) a transitional
program for covered business method patents (CBM); and (4) derivation
proceedings. The AIA requires the USPTO to promulgate rules specific to
each proceeding, with the PGR, IPR and CBM rules in effect one year
after AIA enactment and the derivation rules in effect 18 months after
AIA enactment. This Practice Guide is intended to advise the public on
the general framework of the proposed rules, including the structure
and times for taking action in each of the new proceedings.
In developing the proposed rules and this guide, the Office
expresses its gratitude for the thoughtful and comprehensive comments
provided by the public, which are available on the USPTO Web site:
http://www.uspto.gov/patents/law/comments/aia_implementation.jsp.
Statutory Requirements
The AIA provides certain minimum requirements for each of the new
proceedings. Provided below is a brief overview of these requirements.
Proceedings begin with the filing of a petition to institute a
trial. The petition must be timely filed and be accompanied by the
evidence the petitioner seeks to rely upon. For IPR, PGR, and CBM, the
patent owner is afforded an opportunity to file a preliminary response.
35 U.S.C. 313, as amended, and 35 U.S.C. 323.
The Director may institute a trial where the petitioner establishes
that the standards for instituting the requested trial are met.
Conversely, the Director may not authorize a trial where the
information presented in the petition, taking into account any
preliminary patent owner response, fails to meet the requisite standard
for instituting the trial, e.g., 35 U.S.C. 314, as amended, and 35
U.S.C. 324. Where there are multiple matters in the Office involving
the same patent, the Director may determine how the proceeding will
proceed, including providing for stay, transfer, consolidation, or
termination of any such matter, e.g., 35 U.S.C. 315, as amended, and 35
U.S.C. 325.
The AIA requires that the Board conduct AIA trials and that the
Director prescribe regulations concerning the conduct of those trials.
35 U.S.C. 6, 135 and 316, as amended, and 35 U.S.C. 326. For example,
for IPR, PGR, and CBM, the AIA mandates the promulgation of rules
including motions to seal, procedures for filing supplemental
information, standards and procedures for discovery, sanctions for
improper use of the proceeding, entry of protective orders, and oral
hearings. Additionally, the AIA mandates the promulgation of rules for
IPR, PGR, and CBM concerning the submission of a patent owner response
with supporting evidence and allowing the patent owner a motion to
amend the patent.
A petitioner and a patent owner may terminate the proceeding with
respect to the petitioner by filing a written agreement with the
Office, unless the Office has already decided the merits of the
proceeding, e.g., 35 U.S.C. 317, as amended, and 35 U.S.C. 327. If no
petitioner remains in the proceeding,
[[Page 6869]]
the Office may terminate the review or proceed to a final written
decision. For derivation proceedings, the parties may arbitrate issues
in the proceeding, but nothing precludes the Office from determining
the patentability of the claimed inventions involved in the proceeding.
35 U.S.C. 135, as amended. Where a trial has been instituted and not
dismissed, the Board will issue a final written decision with respect
to the involved patent and/or applications. 35 U.S.C. 135 and 35 U.S.C.
318, as amended, and 35 U.S.C. 328.
For IPR, PGR and CBM, the AIA requires that the Office consider the
effect of the regulations on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to timely complete the proceedings. 35 U.S.C. 316, as
amended, and 35 U.S.C. 326. In developing the general trial rules, as
well as the individual proceeding specific rules, the Office has taken
these considerations into account. Further, the individual proceeding
specific rules take into account the jurisdictional and timing
requirements for the particular proceedings.
General Overview
Generally, the proceedings begin with the filing of a petition that
identifies all of the claims challenged and the grounds and supporting
evidence on a claim-by-claim basis. Within two months of notification
of a filing date, the patent owner in an IPR, PGR, or CBM proceeding
may file a preliminary response to the petition, including a simple
statement that patent owner elects not to respond to the petition prior
to the institution of a review. The Board will determine whether to
institute the requested proceeding within three months of the date the
patent owner's preliminary response was due or was filed, whichever is
first.
In instituting a trial, the Board will narrow the issues for final
decision by authorizing the trial to proceed only on the challenged
claims for which the threshold requirements for the proceeding have
been met. Further, the Board will identify which of the grounds the
trial will proceed upon on a claim-by-claim basis. Any claim or issue
not included in the authorization for review is not part of the trial.
A party dissatisfied with the Board's determination may request
rehearing as to points believed to have been overlooked or
misapprehended. See proposed Sec. 42.71(c)(1).
The Board will enter a Scheduling Order (Appendix A) concurrent
with the decision to institute the proceeding. The Scheduling Order
will set due dates for the proceeding taking into account the
complexity of the proceeding but ensuring that the trial is completed
within one year of institution.
For example, a Scheduling Order for an IPR might provide a four
month deadline for patent owner discovery and for filing a patent owner
response and motion to amend. Once the patent owner's response and
motion to amend have been filed, the Scheduling Order might provide the
petitioner with two months for discovery and for filing a petitioner's
reply to the response and the petitioner's opposition to the amendment.
The Scheduling Order might then provide the patent owner with one month
for discovery and for filing a patent owner reply to petitioner's
opposition to a patent owner amendment. A representative timeline is
provided below:
[GRAPHIC] [TIFF OMITTED] TP09FE12.000
Sequence of discovery. Once instituted, absent special
circumstances, discovery will proceed in a sequenced fashion. For
example, the patent owner may begin deposing the petitioner's
declarants once the proceeding is instituted. After patent owner has
filed a patent owner response and any motion to amend the claims, the
petitioner may depose the patent owner's declarants. Similarly, after
the petitioner has filed a reply to the patent owner's response and an
opposition to an amendment, the patent owner may depose the
petitioner's declarants and file a reply in support of its claim
amendments. Where the patent owner relies upon new declaration evidence
in support of its amendments, the petitioner will be authorized to
depose the declarants and submit observations on the deposition. Once
the time for taking discovery in the trial has ended, the parties will
be authorized to file motions to exclude evidence believed to be
inadmissible. Admissibility of evidence is generally governed by the
Federal Rules of Evidence.
Sequence of filing responses and motions. An initial conference
call will be held about one month from the date of institution to
discuss the motions that the parties intend to file and to determine if
any adjustment needs to be made to the Scheduling Order. After a patent
owner response has been filed, along with any motion to amend the
claims, the petitioner will have the opportunity to depose the patent
owner's declarants. The petitioner will then file a reply to the patent
owner's response and any opposition to the patent owner's amendment.
Both parties will be permitted an opportunity to file motions to
exclude an opponent's evidence believed to be inadmissible. After all
motions have been filed, the parties will be afforded an opportunity to
have an oral argument at the Board.
Summary of the Proposed Rules
The following is a general summary of the rules for the
proceedings.
I. General Procedures
The rules are to be implemented so as to ensure the just, speedy,
and inexpensive resolution of a proceeding
[[Page 6870]]
and, where appropriate, the rules may be modified to accomplish these
goals, proposed Sec. 42.1(b); proposed Sec. 42.5(a) and (b)
(references to proposed Sec. 42.x refer to title 37 of the Code of
Federal Regulations).
A. Jurisdiction and Management of the Record
1. Jurisdiction: 35 U.S.C. 6(b), as amended, provides that the
Board is to conduct derivation proceedings, inter partes reviews, and
post-grant reviews. The Board also conducts transitional program for
covered business method reviews, which are subject to Board review
under 35 U.S.C. 6(b), as amended, and 35 U.S.C. 326(c) and Public Law
112-29, Sec. 18. The Board therefore will have exclusive jurisdiction
within the Office over every application and patent that is involved in
a derivation, IPR, PGR or CBM proceeding. Ex parte reexamination
proceedings and inter partes reexamination proceedings are not involved
applications or patents in proceedings and are treated separately
unless specifically consolidated with a proceeding.
2. Prohibition on Ex Parte Communications: All substantive
communications with the Board regarding a proceeding must include all
parties to the proceeding, except as otherwise authorized, proposed
Sec. 42.5(d). In general, it would be prudent to avoid substantive ex
parte discussions of a pending trial with a Board member or Board
employee. The prohibition on ex parte communications does not extend
to: (1) Ministerial communications with support staff (for instance, to
arrange a conference call); (2) conference calls or hearings in which
opposing counsel declines to participate; (3) informing the Board in
one proceeding of the existence or status of a related Board
proceeding; or (4) reference to a pending case in support of a general
proposition (for instance, citing a published opinion from a pending
case or referring to a pending case to illustrate a systemic problem).
Arranging a conference call with the Board. When arranging a
conference call, be prepared to discuss with a Trial Section paralegal
why the call is needed and what materials may be needed during the
call, e.g., a particular exhibit.
Refusal to participate. The Board has the discretion to permit a
hearing or conference call to take place even if a party refuses to
participate. In such cases, the Board may require additional
safeguards, such as the recording of the communication and the entry of
the recording into the record.
B. Counsel
Need for lead and back-up counsel. A party represented by counsel
should designate both a lead as well as a back-up counsel who can
conduct business on behalf of the lead counsel, as instances may arise
where lead counsel may be unavailable. Proposed Sec. 42.10(a).
Power of attorney. A power of attorney must be filed with the
designation of counsel, unless the designated counsel is already
counsel of record. Proposed Sec. 42.10(b).
Pro hac vice. The Board, consistent with current practice, may
recognize counsel pro hac vice during a proceeding upon a showing of
good cause, subject to such conditions as the Board may impose.
Proposed Sec. 42.10(c). Proceedings before the Office can be
technically complex. For example, it is expected that amendments to a
patent will be sought. Consequently, the grant of a motion to appear
pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, and incivility.
C. Electronic Filing
Electronic filing is the default manner in which documents are to
be filed with the Board. Proposed Sec. 42.6(b). Electronic filing of
legal documents is being implemented across the country in state and
federal courts. The use of electronic filing aids in the efficient
administration of the proceeding, improves public accessibility, and
provides a more effective document management system for the Office and
parties. The manner of submission will be established by the Board and
will be published on the Web site of the Office (www.uspto.gov).
Paper filing may be used where appropriate, but must be accompanied
by a motion explaining the need for non-electronic filing. Based upon
experience with contested cases, the Board does not expect to receive
many requests to file paper submissions. Circumstances where a paper
filing may be warranted include those occasions where the Office's
electronic filing system is unable to accept filings. Alternatively, if
a problem with electronic filing arises during normal business hours, a
party may contact the Board and request a one-day extension of time for
due dates that are set by rule or orders of the Board.
D. Mandatory Notices
The rules require that parties to a proceeding provide certain
mandatory notices, including identification of the real parties in
interest, related matters, lead and back-up counsel and service
information. Proposed Sec. 42.8. Where there is a change of
information, a party must file a revised notice within 21 days of the
change. Proposed Sec. 42.8(a)(3).
1. Real Party in Interest or privy: The identification of the real
party in interest helps the Office identify potential conflicts of
interests and helps identify potential statutory bars.
Whether a party who is not a named participant in a given
proceeding nonetheless constitutes a ``real party in interest'' or
``privy'' to that proceeding is a highly fact-dependent question. See
generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A Charles Alan
Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice &
Procedure Sec. Sec. 4449, 4451 (2d ed. 2011). Such questions will be
handled by the Board on a case-by-case basis taking into consideration
how courts have viewed the terms ``real party in interest'' and
``privy.'' See, e.g., Taylor, 553 U.S. at 893-895 and 893 n.6 (noting
that ``[t]he list that follows is meant only to provide a framework
[for the decision], not to establish a definitive taxonomy'').
While there are multiple bases upon which a non-party may be
recognized as a ``real party in interest'' or ``privy,'' a common
consideration is whether the non-party exercised or could have
exercised control over a party's participation in a proceeding. See,
e.g., Id. at 895; see generally Wright & Miller Sec. 4451. The concept
of control generally means that ``it should be enough that the nonparty
has the actual measure of control or opportunity to control that might
reasonably be expected between two formal coparties.'' Wright & Miller
Sec. 4451. Courts and commentators agree, however, that there is no
``bright-line test'' for determining the necessary quantity or degree
of participation to qualify as a ``real party in interest'' or
``privy'' based on the control concept. Gonzalez v. Banco Cent. Corp.,
27 F.3d 751, 759 (1st Cir. 1994). See also Wright & Miller Sec. 44512
(``The measure of control by a nonparty that justifies preclusion
cannot be defined rigidly.''). Accordingly, the proposed rules do not
enumerate particular factors regarding a ``control'' theory of ``real
party in interest'' or ``privy'' under the statute.
Many of the same considerations that apply in the context of ``res
judicata'' will likely apply in the ``real party in interest'' or
``privy'' contexts. See Gonzalez, 27 F.3d at 759; see generally Wright
& Miller Sec. 4451. Other considerations may also apply in the unique
context of statutory estoppel. See generally, e.g., In re Arviv
[[Page 6871]]
Reexamination Proceeding, Control No. 95/001,526, Decision Dismissing
Sec. 1.182 and Sec. 1.183 Petitions, at 6 (Apr. 18, 2011); In re
Beierbach Reexamination Proceeding, Control No. 95/000,407, Decision on
Sec. 1.182 and Sec. 1.183 Petitions, at 6 (July 28, 2010); In re
Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206,
Decision Dismissing Petition, at 5 (June 22, 2010); In re Guan Inter
Partes Reexamination Proceeding, Control No. 95/001,045, Decision
Vacating Filing Date, at 8 (Aug. 25, 2008).
2. Related Matters: Parties to a proceeding are to identify any
other judicial or administrative matter that would affect, or be
affected by, a decision in the proceeding. Judicial matters include
actions involving the patent in federal court. Administrative matters
that would be affected by a decision in the proceeding include every
application and patent claiming, or which may claim, the benefit of the
priority of the filing date of the party's involved patent or
application as well as any ex parte and inter partes reexaminations for
an involved patent.
3. Identification of service information: Parties are required to
identify service information to allow for efficient communication
between the Board and the parties. Additionally, while the Board is
authorized to provide notice by means other than mailing to the
correspondence address of record, it is ultimately the responsibility
of the applicant or patent owner to maintain a proper correspondence
address in the record. Ray v. Lehman, 55 F.3d 606, 610 (Fed. Cir.
1995).
E. Public Availability and Confidentiality
The proposed rules aim to strike a balance between the public's
interest in maintaining a complete and understandable file history and
the parties' interest in protecting truly sensitive information.
1. Public availability: The record of a proceeding, including
documents and things, shall be made available to the public, except as
otherwise ordered. Proposed Sec. 42.14. Accordingly, a document or
thing will be made publicly available, unless a party files a motion to
seal, which is granted by the Board.
2. Confidential information: The rules identify confidential
information in a manner consistent with Federal Rule of Civil Procedure
26(c)(1)(G), which provides for protective orders for trade secret or
other confidential research, development or commercial information.
Proposed Sec. 42.54.
3. Motion to seal: A party intending a document or thing to be
sealed may file a motion to seal the document or thing. Proposed Sec.
42.14. The document or thing will be provisionally sealed on receipt of
the motion and remain so pending the outcome of the decision on motion.
4. Protective orders: A party from whom discovery of confidential
information is sought may file a motion to seal where the motion
contains a proposed protective order. Proposed Sec. 42.54.
Specifically, protective orders may be issued for good cause by the
Board to protect a party from disclosing confidential information.
Proposed Sec. 42.54. Guidelines on proposing a protective order in a
motion to seal, including a Standing Protective Order, are provided in
Appendix B. The document or thing will be protected on receipt of the
motion and remain so, pending the outcome of the decision on motion.
5. Confidential information in a petition: A petitioner filing
confidential information with a petition may file a motion to seal
concurrent with the petition, where the motion to seal contains a
proposed protective order. The confidential information may be served
to the patent owner under seal. The patent owner may only access the
sealed information if it agrees to the terms of the proposed protective
order. The institution of the proceeding will constitute a grant of the
motion to seal unless otherwise ordered by the Board. Proposed Sec.
42.55.
The proposed rule seeks to streamline the process of seeking
protective orders prior to the institution of the review while
balancing the need to protect confidential information against an
opponent's ability to access information used to challenge the
opponent's claims.
6. Expungement of confidential information: Confidential
information that is subject to a protective order ordinarily would
become public 45 days after denial of a petition to institute a trial
or 45 days after final judgment in a trial. There is an expectation
that information will be made public where the existence of the
information is referred to in a decision to grant or deny a request to
institute a review or is identified in a final written decision. A
party seeking to maintain the confidentiality of information, however,
may file a motion to expunge the information from the record prior to
the information becoming public. Proposed Sec. 42.56. The rule
balances the needs of the parties to submit confidential information
with the public interest in maintaining a complete and understandable
file history for public notices purposes. The rule encourages parties
to redact sensitive information, where possible, rather than seeking to
seal entire documents.
F. Discovery
Discovery is a tool to develop a fair record and to aid the Board
in assessing the credibility of witnesses. To streamline the
proceedings, the rules and Scheduling Order provide a sequenced
discovery process upon institution of the trial. Specifically, each
party will be provided respective discovery periods, with the patent
owner going first. The sequenced discovery allows parties to conduct
meaningful discovery before they are required to submit their
respective motions and oppositions. Thus, discovery before the Board is
focused on what the parties reasonably need to respond to the grounds
raised by an opponent. In this way, the scope of the trial continually
narrows.
1. Routine discovery: Routine discovery includes: (1) Production of
any exhibit cited in a paper or testimony, (2) the cross examination of
the other sides declarant, and (3) information that is inconsistent
with a position advanced during the proceeding. Routine discovery
places the parties on a level playing field and streamlines the
proceeding. Board authorization is not required to conduct routine
discovery, although the Board will set the times for conducting this
discovery in its Scheduling Order.
2. Additional discovery: A request for additional discovery must be
in the form of a motion, although the parties may agree to discovery
amongst themselves. The standard for granting such requests varies with
the proceeding. An ``interests of justice'' standard applies in IPR and
derivations, whereas the more liberal ``good cause'' standard applies
in PGR and CBM. An additional discovery request could be granted under
either standard, for example, when a party raises an issue where the
evidence on that issue is uniquely in the possession of the party that
raised it.
3. Compelled testimony: A party can request authorization to compel
testimony under 35 U.S.C. 24. If a motion to compel testimony is
granted, testimony may be (1) ex parte, subject to subsequent cross
examination, or (2) inter partes. Therriault v. Garbe, 53 USPQ2d 1179,
1184 (BPAI 1999). Prior to moving for or opposing compelled testimony,
the parties should discuss which procedure is appropriate.
4. Live testimony: Cross-examination may be ordered to take place
in the presence of an administrative patent
[[Page 6872]]
judge. Occasionally, the Board will require live testimony where the
Board considers the demeanor of a witness critical to assessing
credibility. Examples of where such testimony has been ordered in
contested cases before the Board include cases where derivation or
inequitable conduct is an issue or where testimony is given through an
interpreter.
5. Times and locations for taking cross examination: The rules do
not provide specific time limits for cross examination. The Board
expects to handle such issues via an Order requiring the parties to
confer to reach agreement on reasonable times, dates, and locations for
cross examination of witnesses.
The Board has issued such Orders in contested cases and has not
experienced problems arising from such Orders.
II. Petitions and Motions Practice
A. General Motions Practice Information
1. Motions practice: The proceedings begin with the filing of a
petition that lays out the petitioner's grounds and supporting evidence
for the requested proceeding. Additional relief in a proceeding must be
requested in the form of a motion. Proposed Sec. 42.20(a).
2. Prior authorization: Generally, a motion will not be entered
without prior Board authorization. Proposed Sec. 42.20(b). Exceptions
include motions where it is impractical for a party to seek prior Board
authorization and motions for which authorization is automatically
granted. Motions where it is not practical to seek prior Board
authorization include motions to seal and motions filed with a
petition, such as motions to waive page limits. Motions where
authorization is automatically granted include requests for rehearing,
observations on cross-examination, and motions to exclude evidence. The
Board expects that the Scheduling Order will pre-authorize and set
times for the filing of observations on cross-examination and motions
to exclude evidence based on inadmissibility. See Appendix A,
Scheduling Order.
Typically, authorization for a motion is obtained during an initial
conference call, which generally occurs within one month of the
institution of IPR, PGR, CBM, and derivation proceedings. Additionally,
where more immediate relief is required or the request arises after the
initial conference call, a party should institute a conference call to
obtain such authorization. The Board has found that this practice
simplifies a proceeding by focusing the issues early, reducing costs
and efforts associated with motions that are beyond the scope of the
proceeding. By taking an active role in the proceeding, the Board can
eliminate delay in the proceeding and ensure that attorneys are
prepared to resolve the relevant disputed issues.
3. Page Limits: Petitions, motions, oppositions, and replies filed
in a proceeding are subject to page limits in order to streamline the
proceedings. Proposed Sec. 42.24. The rules set a limit of 50 pages
for petitions requesting inter partes reviews and derivation
proceedings, 70 pages for petitions requesting post-grant review and
covered business method patent reviews, and 15 pages for motions.
Proposed Sec. 42.24(a). Oppositions are limited to an equal number of
pages as the corresponding motion. Proposed Sec. 42.24(b). Replies to
petitions are limited to 15 pages and replies to motions are limited to
5 pages. Proposed Sec. 42.24(c).
Federal courts routinely use page limits to manage motions practice
as ``[e]ffective writing is concise writing.'' Spaziano v. Singletary,
36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Federal courts have found that
page limits ease the burden on both the parties and the courts, and
patent cases are no exception. Broadwater v. Heidtman Steel Prods.,
Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002) (``Counsel are strongly
advised, in the future, to not ask this Court for leave to file any
memoranda (supporting or opposing dispositive motions) longer than 15
pages. The Court has handled complicated patent cases and employment
discrimination cases in which the parties were able to limit their
briefs supporting and opposing summary judgment to 10 or 15 pages.'').
Although parties are given wide latitude in how they present their
cases, the Board's experience is that the presentation of an
overwhelming number of issues tends to detract from the argument being
presented, and can cause otherwise meritorious issues to be overlooked
or misapprehended. Thus, parties should avoid submitting a repository
of all the information that a judge could possibly consider, and
instead focus on simple, well organized, easy to follow arguments
supported by readily identifiable evidence of record. Another factor to
keep in mind is that the judges of the Board are familiar with the
general legal principles involved in issues which come before the
Board. Accordingly, extended discussions of general patent law
principles are not necessary.
4. Testimony Must Disclose Underlying Facts or Data: The Board
expects that most petitions and motions will rely upon affidavits of
experts. Affidavits expressing an opinion of an expert must disclose
the underlying facts or data upon which the opinion is based. See Fed.
R. Evid. 705; and proposed Sec. 42.65. Opinions expressed without
disclosing the underlying facts or data may be given little or no
weight. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit
jurisprudence requires the fact finder to credit unsupported assertions
of an expert witness).
5. Tests and Data: Parties often rely on scientific tests and data
to support their positions. Examples include infra-red spectroscopy
graphs, high-performance liquid-chromatography data, etc. In addition
to providing the explanation required in proposed Sec. 42.65, a party
relying on the test should provide any other information the party
believes would assist the Board in understanding the significance of
the test or the data.
6. Secondary Indicia of Nonobviousness: The Board expects that most
petitions will raise issues of obviousness. In determining whether the
subject matter of a claim would have been obvious over the prior art,
the Board may review objective evidence of secondary considerations.
B. Petition
Proceedings begin with the filing of a petition. The petition lays
out the petitioner's grounds and supporting evidence, on a challenged
claim-by-claim basis, for instituting the requested proceeding.
1. Filing date--Minimum Procedural Compliance: To obtain a filing
date, the petition must meet certain minimum standards. Generally, the
standards required for a petition are those set by statute for the
proceeding requested. For example, an IPR requires that a complete
petition be filed with the required fee, and include a certificate of
service for the petition, fee, and evidence relied upon. Proposed Sec.
42.106. A complete petition for IPR requires that the petitioner
certify that the patent is eligible for inter partes review and that
the petitioner is not barred or estopped from requesting the review,
and must identify the claims being challenged and the specific basis
for the challenge. Proposed Sec. 42.104. Similar petition requirements
apply to PGR (proposed Sec. 42.204) and derivations (proposed Sec.
42.404). CBM reviews also require a petition demonstrate that the
patent for which review is sought is a covered business method patent.
Proposed Sec. 42.304.
[[Page 6873]]
2. Burden of Proof for Statutory Institution Thresholds: The burden
of proof in a proceeding before the Board is a preponderance of the
evidence. Proposed Sec. 42.1(d).
3. Specific Requirements for Petition: A petitioner must certify
that the patent or application is available for review and that the
petitioner is not barred or estopped from seeking the proceeding.
Proposed Sec. Sec. 42.104, 42.204, 42.304, and 42.405. Additionally, a
petitioner must identify all the claims that are challenged and the
specific statutory grounds on which the challenge to the claim is
based, provide a claim construction for the challenged claims, and
state the relevance of the evidence to the issues raised. Id. For IPR,
PGR, and CBM proceedings, a petitioner must also identify how the
construed claim is unpatentable over the relevant evidence.
4. Covered Business Method/Technological Invention: A petitioner in
a CBM proceeding must demonstrate that the patent for which review is
sought is a covered business method patent. Proposed Sec. 42.304(a).
Covered business method patents do not include patents for
technological inventions.
The following claim drafting techniques would not typically render
a patent a technological invention:
(a) Mere recitation of known technologies, such as computer
hardware, communication or computer networks, software, memory,
computer-readable storage medium, scanners, display devices or
databases, or specialized machines, such as an ATM or point of sale
device.
(b) Reciting the use of known prior art technology to accomplish a
process or method, even if that process or method is novel and non-
obvious.
(c) Combining prior art structures to achieve the normal, expected,
or predictable result of that combination.
The following are examples of covered business method patents that
are subject to a CBM review proceeding:
(a) A patent that claims a method for hedging risk in the field
of commodities trading.
(b) A patent that claims a method for verifying validity of a
credit card transaction.
The following are examples of patents that claim a technological
invention that would not be subject to a CBM review proceeding:
(a) A patent that claims a novel and non-obvious hedging machine
for hedging risk in the field of commodities trading.
(b) A patent that claims a novel and non-obvious credit card
reader for verifying the validity of a credit card transaction.
5. General Practice Tips:
Claim Charts. While not required, a petitioner may file a claim
chart to explain clearly and succinctly what the petitioner believes a
claim means in comparison to something else, such as another claim, a
reference, or a specification. Where appropriate, claim charts can
streamline the process of identifying key features of a claim and
comparing those features with specific evidence. Claim charts submitted
as part of a petition or motion count towards applicable page limits. A
claim chart from another proceeding that is submitted as an exhibit,
however, will not count towards page limits.
C. Preliminary Patent Owner Response
For IPR, PGR, and CBM proceedings, a patent owner may file a
preliminary response no later than two months after the grant of a
filing date. Proposed Sec. Sec. 42.107(b) and 42.207(b). The
preliminary response may present evidence other than testimonial
evidence to demonstrate that no review should be instituted. Proposed
Sec. Sec. 42.107(c) and 42.207(c).
Potential preliminary responses include:
(1) The petitioner is statutorily barred from pursuing a review.
(2) The references asserted to establish that the claims are
unpatentable are not in fact prior art.
(3) The prior art lacks a material limitation in all of the
independent claims.
(4) The prior art teaches or suggests away from a combination that
the petitioner is advocating.
(5) The petitioner's claim interpretation for the challenged claims
is unreasonable.
(6) If a petition for post-grant review raises 35 U.S.C. 101
grounds, a brief explanation as to how the challenged claims are
directed to a patent-eligible invention.
Where a patent owner seeks to expedite the proceeding, the patent
owner may file an election to waive the preliminary patent owner
response. Proposed Sec. Sec. 42.107(b) and 42.207(b). No adverse
inference will be taken by such an election. Moreover, a patent owner
may file a statutory disclaimer of one or more challenged claims to
streamline the proceedings. Where no challenged claims remain, the
Board would terminate the proceeding. Where one or more challenged
claims remain, the Board's decision on institution would be based
solely on the remaining claims. See Sony v. Dudas, 2006 WL 1472462
(E.D.Va. 2006).
D. Institution of Review
1. Statutory Threshold Requirements: Generally, the Director may
institute a proceeding where a petitioner meets the threshold
requirements, although each proceeding has a different threshold
requirement for institution. Each of the statutory threshold
requirements are summarized below.
(a) Inter Partes Review: 35 U.S.C. 314(a), as amended, provides
that the Director may not authorize institution of an inter partes
review, unless the Director determines that the information presented
in the petition filed under 35 U.S.C. 311, as amended, and any response
filed under 35 U.S.C. 313, as amended, shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
one of the claims challenged in the petition. The ``reasonable
likelihood'' standard is a somewhat flexible standard that allows the
judge room for the exercise of judgment.
(b) Post-Grant Review: 35 U.S.C. 324(a) provides that the Director
may not authorize institution of a post-grant review, unless the
Director determines that the information presented in the petition
filed under 35 U.S.C. 321, if such information is not rebutted, would
demonstrate that it is more likely than not that at least one of the
claims challenged in the petition is unpatentable. 35 U.S.C. 324(b)
provides that the determination required under 35 U.S.C. 324(a) may
also be satisfied by a showing that the petition raises a novel or
unsettled legal question that is important to other patents or patent
applications.
(c) Covered Business Method Patent Review: Section 18(a)(1) of the
AIA provides that the transitional proceeding for covered business
method patents will be regarded as, and will employ the standards and
procedures of, a post-grant review under chapter 32 of title 35 United
States Code, subject to certain exceptions. Section 18(a)(1)(B) of the
Leahy-Smith America Invents Act specifies that a person may not file a
petition for a transitional proceeding with respect to a covered
business method patent, unless the person or person's real party in
interest or privy has been sued for infringement of the patent or has
been charged with infringement under that patent. A covered business
method patent means a patent that claims a method or corresponding
apparatus for performing data processing or other operations used in
the practice, administration, or management of a financial product or
service. Covered business method patents do not include patents for
technological inventions.
(d) Derivation: 35 U.S.C. 135(a), as amended, provides that an
applicant for a patent may file a petition to institute a derivation
proceeding. 35 U.S.C.
[[Page 6874]]
135(a), as amended, provides that the petition must state with
particularity the basis for finding that a named inventor in the
earlier application derived the claimed invention from an inventor
named in the petitioner's application and, without authorization, filed
the earlier application. The petition must be filed within one year of
the first publication by the earlier applicant of a claim to the same
or substantially the same invention, must be made under oath, and must
be supported by substantial evidence. 35 U.S.C. 135(a), as amended,
also provides that the Director may institute a derivation proceeding,
if the Director determines that the petition demonstrates that the
standards for instituting a derivation proceeding are met.
2. Considerations in Instituting a Review: The Board institutes the
trial on behalf of the Director. Proposed Sec. 42.4(a). In instituting
the trial, the Board will consider whether or not a party has satisfied
the statutory institution requirements. As part of its consideration,
the Board may take into account the existence of another proceeding
before the Board under 35 U.S.C. 315(d), as amended, and whether the
same or substantially the same prior art or arguments were previously
presented to the Office under 35 U.S.C. 325(d).
3. Content of Decision on Whether to Institute: In instituting a
trial, the Board will streamline the issues for final decision by
authorizing the trial to proceed only on the challenged claims for
which the threshold requirements for the proceeding have been met. The
Board will identify the grounds the trial will proceed upon on a claim-
by-claim basis. Any claim or issue not included in the authorization
for review is not part of the trial.
The Board expects that a Scheduling Order (Appendix A) will be
provided concurrent with the decision to institute the proceeding. The
Scheduling Order will set due dates for taking action accounting for
the complexity of the proceeding but ensuring that the trial is
completed within one year of institution.
Where no trial is instituted, a decision to that effect will be
provided. The Board expects that the decision will contain a short
statement as to why the requirements were not met, although this may
not be necessary in all cases. A party dissatisfied with a decision may
file a request for rehearing before the Board, but the Board's
determination on whether to institute a trial is final and
nonappealable. 35 U.S.C. 135(a) and 314(d), as amended, 35 U.S.C.
324(e); and proposed Sec. 42.71(c).
E. Initial Conference Call (One Month After Instituting Trial)
The Board expects to initiate a conference call within about one
month from the date of institution of the trial to discuss the
Scheduling Order and any motions that the parties anticipate filing
during the trial. Generally, the Board would require a list of proposed
motions to be filed no later than two business days prior to the
conference call. An accurate motions list is necessary to provide the
Board and the opposing parties adequate notice to prepare for the
conference call and to plan for the proceeding. The Board's contested
cases experience demonstrates that discussing the proposed motions aids
the administration of justice by (1) helping the Board and counsel
adjust the schedule for taking action, (2) permitting the Board to
determine whether the listed motions are both necessary and sufficient
to resolve the issues raised, and (3) revealing the possibility that
there may be a dispositive issue that may aid the settlement of the
trial. Submission of a list would not preclude the filing of additional
motions not contained in the list. However, the Board may require prior
authorization to file an additional motion and the set times are not
likely to change as a consequence of the new motion.
F. Patent Owner Response
For IPR, PGR, and CBM, the patent owner will be provided an
opportunity to respond to the petition once a trial has been
instituted. 35 U.S.C. 316(a)(8), as amended, and 35 U.S.C. 326(a)(8).
For a derivation proceeding, the applicant or patent owner alleged to
have derived the invention will be provided an opportunity to respond
to the petition once the trial has been instituted, App. A-2,
Scheduling Order.
The response is filed as an opposition to the petition and is
subject to the page limits for oppositions. Proposed Sec. Sec. 42.120
and 42.220. The response should identify all the involved claims that
are believed to be patentable and state the basis for that belief.
Additionally, the response should include any affidavits or additional
factual evidence sought to be relied upon and explain the relevance of
such evidence. As with the petition, the response may contain a claim
chart identifying key features of a claim and comparing those features
with specific evidence. Where the patent owner elects not to file a
response, the patent owner will arrange for a conference call with the
Board to discuss whether or not the patent owner is abandoning the
contest.
G. Amendments
1. IPR, PGR, and CBM Amendments: Patent owners in IPR, PGR and CBM
may file amendments subject to certain conditions. Only one motion to
amend will be permitted, absent a joint request by the petitioner and
patent owner to materially advance settlement of the proceeding, or
upon the request of the patent owner for good cause showing. 35 U.S.C.
316(d)(1), as amended, and 35 U.S.C. 326(d)(1). Patent owners seeking
to amend their claims would identify their intent to file such a motion
in a conference call with the Board. During the call, the patent owner
will be expected to identify the number and general scope of substitute
claims that would be filed in the motion to amend. Proposed Sec. Sec.
42.121(a) and 42.221(a). A patent owner will not be required to
identify a fully developed claim set.
2. Amendments in Derivation Proceedings: The filing of an amendment
by a petitioner or respondent in a derivation proceeding will be
authorized upon a showing of good cause. An example of good cause is
where the amendment materially advances settlement between the parties
or seeks to cancel claims. The Board expects, however, that requests to
cancel all of a party's disputed claims will be treated as a request
for adverse judgment.
3. General Practice Tips on Amendments: Amendments are expected to
be filed at the due dates set for filing a patent owner response or
respondent opposition to a petition. For amendments sought later in the
proceeding, a demonstration of good cause will be required. Amendments
filed late in the proceeding may impair a petitioner's ability to mount
a full response in time to meet the statutory deadline for the
proceeding. Hence, in evaluating good cause, the Board will take into
account the timing of the submission with requests made earlier in the
proceeding requiring less compelling reasons than would be required for
amendments later in the proceeding. Cancellation of claims, however,
will generally be permitted even late in the proceeding as will
amendments seeking to correct simple and obvious typographical error to
reduce the number of issues in dispute.
Amendments should clearly state ``original,'' ``cancelled,''
``replaced by proposed substitute,'' or ``proposed substitute for
original claim X.''
Amendments should clearly state where the specification and any
drawings disclose all the limitations in
[[Page 6875]]
the proposed substitute claims. If the Board is unable to determine how
the specification and drawings support the proposed substitute claims,
entry of the amendment will not be permitted.
Amendments should clearly state the patentably distinct features
for proposed substitute claims. This will aid the Board in determining
whether the amendment narrows the claims and if the amendment is
responsive to the grounds of unpatentability involved in the trial.
The number of substitute claims must be ``reasonable.'' There is a
general presumption that only one substitute claim would be needed to
replace each challenged claim. This presumption may be rebutted by a
demonstration of need. The presumption balances the one-year timeline
for final decision against the patent owner's need to appropriately
define their invention.
H. Petitioner Opposition to Amendment
A petitioner will be afforded an opportunity to fully respond to a
patent owner's amendment. The time for filing an opposition will
generally be set in a Scheduling Order. No authorization is needed to
file an opposition to an amendment. Petitioners may supplement evidence
submitted with their petition to respond to new issues arising from
proposed substitute claims. This includes the submission of new expert
declarations that are directed to the proposed substitute claims.
I. Petitioner Reply to Patent Owner Response and Reply to Opposition To
Amend
A reply may only respond to arguments raised in the corresponding
opposition. Proposed Sec. 42.23. While replies can help crystalize
issues for decision, a reply that raises a new issue or belatedly
presents evidence will not be considered and may be returned. The Board
will not attempt to sort proper from improper portions of the reply.
Examples of indications that a new issue has been raised in a reply
include new evidence necessary to make out a prima facie case for the
patentability or unpatentability of an original or proposed substitute
claim, and new evidence that could have been presented in a petition or
amendment.
J. Additional Motions
There are many types of motions that may be filed in a proceeding
in addition to motions to amend. Examples of additional motions include
motions to exclude evidence, motions to seal, motions for joinder,
motions to file supplemental information, motions for judgment based on
supplemental information, motions for observations on cross-
examination, etc.
Where a party believes it has a basis to request relief on a ground
not identified in the rules, the party should contact the Board and
arrange for a conference call to discuss the requested relief with the
judge handling the proceeding.
K. Oral Argument
Each party to a proceeding will be afforded an opportunity to
present their case before at least three members of the Board. The time
for requesting an oral argument is normally set in the Scheduling Order
but may be modified on a case-by-case basis.
Generally, a petitioner to a hearing will go first followed by the
patent owner or respondent after which a rebuttal may be given by the
petitioner. The order may be reversed, e.g., where the only dispute is
whether the patent owner's proposed substitute claims overcome the
grounds for unpatentability set forth in the petition.
Special equipment or needs. A party should advise the Board as soon
as possible before an oral argument of any special needs. Examples of
such needs include additional space for a wheelchair, an easel for
posters, or an overhead projector. Parties should not make assumptions
about the equipment the Board may have on hand. Such requests should be
directed in the first instance to a Board Trial Section paralegal at
(571) 272-9797.
Demonstrative exhibits. The Board has found that elaborate
demonstrative exhibits are more likely to impede than help an oral
argument. The most effective demonstrative exhibits tend to be a
handout or binder containing the demonstrative exhibits. The pages of
each exhibit should be numbered to facilitate identification of the
exhibits during the hearing, particularly if the hearing is recorded.
Live testimony. The Board does not expect live testimony at oral
argument.
No new evidence and arguments. A party may rely upon evidence that
has been previously submitted in the proceeding and may only present
arguments relied upon in the papers previously submitted. No new
evidence or arguments may be presented at the oral hearing.
L. Settlement
There are strong public policy reasons to favor settlement between
the parties to a proceeding. The Board will be available to facilitate
settlement discussions, and where appropriate, may require a settlement
discussion as part of the proceeding. The Board expects that a
proceeding will terminate after the filing of a settlement agreement,
unless the Board has already decided the merits of the proceeding.
M. Final Decision
For IPR, PGR and CBM, the Board will enter a final written decision
not more than one year from the date a trial is instituted, except that
the time may be extended up to six months for good cause. The Board
expects that a final written decision will address the issues necessary
for resolving the proceedings.
In the case of derivation proceedings, although not required by
statute, the Board expects to provide a final decision not more than
one year from the institution of the proceeding. The Board will provide
a final decision as to whether an inventor named in the earlier
application derived the claimed invention from an inventor named in the
petitioner's application and filed the earlier application claiming
such invention without authorization.
N. Rehearing Requests
A party dissatisfied with a decision of the Board may file a
request for rehearing. Proposed Sec. 42.71. The burden of showing that
a decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and where each matter
was previously addressed in a motion, an opposition, or a reply.
Evidence not already of record at the time of the decision will not be
admitted absent a showing of good cause.
Appendix A-1: Scheduling Order for Inter Partes Review, Post-Grant
Review, and Covered Business Method Patents Review (Based on the
Proposed Trial Rules)
A. Due Dates
This order sets due dates for the parties to take action after
institution of the proceeding. The parties may stipulate different
dates for Due Dates 1 through 5 (earlier or later, but no later than
Due Date 6). A notice of the stipulation, specifically identifying
the changed due dates, must be promptly filed. The parties may not
stipulate an extension of Due Dates 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (proposed
Sec. 42.64(b)(1)), to supplement evidence (proposed Sec.
42.64(b)(2)), to conduct cross examination, and to draft papers
depending on the evidence and cross examination testimony (see
section B, below).
1. Due Date 1
The patent owner is not required to file anything in response to
the petition. The patent owner may file--
[[Page 6876]]
a. A response to the petition, and
b. A motion to amend the patent, if authorized.
Any response or amendment must be filed by Due Date 1. If the
patent owner elects not to file anything, the patent owner must
arrange a conference call with the parties and the Board.
2. Due Date 2
Any reply to the patent owner's response and opposition to
amendment filed by petitioner under proposed Sec. 42.23 must be
filed by this date.
3. Due Date 3
The patent owner must file any reply to the petitioner's
opposition by this date.
4. Due Date 4
a. The petitioner must file any motion for an observation on the
cross examination testimony of a reply witness (see section C,
below). Proposed Sec. 42.20.
b. Each party must file any motion to exclude evidence (proposed
Sec. 42.64(c)) and any request for oral argument (proposed Sec.
42.70(a)).
5. Due Date 5
a. The patent owner must file any response to a petitioner
observation on cross examination testimony.
b. Each party must file any opposition to a motion to exclude.
6. Due Date 6
Each party must file any reply for a motion to exclude.
B. Cross Examination
Except as the parties might otherwise agree, for each due date--
1. Cross examination begins after any supplemental evidence is
due (proposed Sec. 42.64(b)).
2. Cross examination ends five business days before the next due
date (proposed Sec. 42.64(b)).
C. Motion for Observation on Cross Examination
A motion for observation on cross examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph. The patent owner may respond to the observation.
Any response must be equally concise and specific.
Due Date Appendix
------------------------------------------------------------------------
------------------------------------------------------------------------
Due Date 1.............................. 4 months.
Patent owner post-institution response
to the petition
Patent owner post-institution motion to
amend patent
Due Date 2.............................. 2 months.
Petitioner reply to patent owner
response
Petitioner opposition to patent owner
amendment
Due Date 3.............................. 1 month.
Patent owner reply to petitioner
opposition
Due Date 4.............................. 3 weeks.
Petitioner motion for observation
regarding cross examination of reply
witness
Motion to exclude
Request for oral argument
Due Date 5.............................. 2 weeks
Patent owner response to observation
Opposition to motion to exclude
Due Date 6.............................. 1 week.
Reply to opposition to motion to exclude
Due Date 7.............................. Set on request.
Oral argument
------------------------------------------------------------------------
Appendix A-2: Scheduling Order for Derivation Proceedings (Based on the
Proposed Trial Rules)
A. Due Dates
This order sets due dates for the parties to take action in this
proceeding. The parties may stipulate different dates for Due Dates
1 through 5 (earlier or later, but not later than Due Date 6). A
notice of the stipulation, specifically identifying the changed due
dates, must be promptly filed. The parties may not stipulate an
extension of Due Dates 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (proposed
Sec. 42.64 (b)(1)), to supplement evidence (proposed Sec.
42.64(b)(2)), to conduct cross examination, and to draft papers
depending on the evidence and cross examination testimony (see
section B, below).
1. Due Date 1
The respondent is not required to file anything in response to
the petition. The respondent may file--
a. A response to the petition, and
b. A motion to amend, if authorized.
Any such response or motion to amend must be filed by Due Date
1. If the respondent elects not to file anything, the respondent
must arrange a conference call with the parties and the Board.
2. Due Date 2
The petitioner must file any reply to the respondent's response
and opposition to amendment.
3. Due Date 3
The respondent must file any reply to the petitioner's
opposition by this date.
4. Due Date 4
a. The petitioner must file any observation on the cross
examination testimony of a reply witness (see section C, below).
b. Each party must file any motion to exclude evidence (proposed
Sec. 42.64(c)) and any request for oral argument (proposed Sec.
42.70(a)).
5. Due Date 5
a. The respondent must file any response to a petitioner
observation on cross examination testimony.
b. Each party must file any opposition to a motion to exclude.
6. Due Date 6
Each party must file any reply for a motion to exclude.
B. Cross Examination
Except as the parties might otherwise agree, for each due date--
1. Cross examination begins after any supplemental evidence is
due (proposed Sec. 42.64(b)(2)).
2. Cross examination ends five business days before the next due
date.
C. Motion for Observation on Cross Examination
A motion for observation on cross examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph.
[[Page 6877]]
The patent owner may respond to the observation. Any response must
be equally concise and specific.
Due Date Appendix
------------------------------------------------------------------------
------------------------------------------------------------------------
Due Date 1.............................. 4 months.
Respondent post-institution response to
the petition
Respondent post-institution motion to
amend
Due Date 2.............................. 2 months.
Petitioner reply to Respondent response
Petitioner opposition to Respondent
amendment
Due Date 3.............................. 1 month.
Respondent reply to petitioner
opposition
Due Date 4.............................. 3 weeks.
Petitioner motion for observation
regarding cross examination of reply
witness
Motion to exclude
Request for oral argument
Due Date 5.............................. 2 weeks.
Respondent response to observation
Opposition to motion to exclude
Due Date 6.............................. 1 week.
Reply to opposition to motion to exclude
Due Date 7.............................. Set on request.
Oral argument
------------------------------------------------------------------------
Appendix B: Protective Order Guidelines (Based on the Proposed Trial
Rules)
(a) Purpose. This document provides guidance on the procedures
for filing of motions to seal and the entry of protective orders in
proceedings before the Board. The protective order governs the
protection of confidential information contained in documents,
discovery, or testimony adduced, exchanged, or filed with the Board.
The parties are encouraged to agree on the entry of a stipulated
protective order. Absent such agreement, the default standing
protective order will be automatically entered.
(b) Timing; lifting or modification of the Protective Order. The
terms of a protective order take effect upon the filing of a Motion
to Seal by a party, and remain in place until lifted or modified by
the Board either on the motion of a party for good cause shown or
sua sponte by the Board.
(c) Protective Order to Govern Treatment of Confidential
Information. The terms of a protective order govern the treatment of
the confidential portions of documents, testimony, and other
information designated as confidential, as well as the filing of
confidential documents or discussion of confidential information in
any papers filed with the Board. The Board shall have the authority
to enforce the terms of the Protective Order, to provide remedies
for its breach, and to impose sanctions on a party and a party's
representatives for any violations of its terms.
(d) Contents. The Protective Order shall include the following
terms:
(1) Designation of Confidential Information. The producing party
shall have the obligation to clearly mark as ``PROTECTIVE ORDER
MATERIAL'' any documents or information considered to be
confidential under the Protective Order.
(2) Persons Entitled to Access to Confidential Information. A
party receiving confidential information shall strictly restrict
access to that information to the following individuals who first
have signed and filed an Acknowledgement as provided herein:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants, or other
persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement,
shall be extended access to confidential information only upon
agreement of the parties or by order of the Board upon a motion
brought by the party seeking to disclose confidential information to
that person. The party opposing disclosure to that person shall have
the burden of proving that such person should be restricted from
access to confidential information.
(F) The Office. Employees and representatives of the U.S. Patent
and Trademark Office who have a need for access to the confidential
information shall have such access without the requirement to sign
an Acknowledgement. Such employees and representatives shall include
the Director, members of the Board and staff, other Office support
personnel, court reporters, and other persons acting on behalf of
the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters, and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding. Such support personnel shall not be required to sign an
Acknowledgement, but shall be informed of the terms and requirements
of the Protective Order by the person they are supporting who
receives confidential information.
(3) Protection of Confidential Information. Persons receiving
confidential information shall take reasonable care to maintain the
confidentiality of that information, including:
(i) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(ii) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(iii) Ensuring that support personnel of the recipient who have
access to the confidential information understand and abide by the
obligation to maintain the confidentiality of information received
that is designated as confidential; and
(iv) Limiting the copying of confidential information to a
reasonable number of copies needed to conduct the proceeding and
maintaining a record of the locations of such copies.
(4) Treatment of Confidential Information. Persons receiving
confidential information shall use the following procedures to
maintain confidentiality of documents and other information--
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information does not qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of
the information submitted to the Board, the submitting party shall
file
[[Page 6878]]
confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made publicly
available. The non-confidential version of the submission shall
clearly indicate the locations of information that has been
redacted. The confidential version of the submission shall be filed
under seal. The redacted information shall remain under seal, unless
upon motion of a party and after a hearing on the issue, or sua
sponte, the Board determines that some or all of the redacted
information does not qualify for confidential treatment.
(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to another
party during discovery or other proceedings before the Board shall
be clearly marked as ``PROTECTIVE ORDER MATERIAL'' and shall be
produced in a manner that maintains its confidentiality.
(5) Confidential Testimony. Any person subject to deposition in
a proceeding may, on the record at the deposition, preliminarily
designate the entirety of the person's testimony and all
transcriptions thereof as Confidential, pending further review.
Within 10 days of the receipt of the transcript of the deposition,
that person, or the person's representative, shall advise the
opposing party of those portions of the testimony to which a claim
of confidentiality is to be maintained, and the reasons in support
of that claim. Such portions shall be treated as confidential and
maintained under seal in any filings to the Board unless, upon
motion of a party and after a hearing on the issue, or sua sponte,
the Board determines that some or all of the redacted information
does not qualify for confidential treatment.
(6) Other Restrictions Imposed By the Board. In addition to the
foregoing, the Board may, in its discretion, include other terms and
conditions in a Protective Order it enters in any proceeding.
(7) Requirement of Acknowledgement. Any person receiving
confidential information during a proceeding before the Board shall,
prior to receipt of any confidential information, first sign an
Acknowledgement, under penalty of perjury, stating the following:
(A) The person has read the Protective Order and understands its
terms;
(B) The person agrees to be bound by the Protective Order and
will abide by its terms;
(C) The person will use the confidential information only in
connection with that proceeding and for no other purpose;
(D) The person shall only extend access to the confidential
information to support personnel, such as administrative assistants,
clerical staff, paralegals and the like, who are reasonably
necessary to assist him or her in the proceeding. The person shall
inform such support personnel of the terms and requirements of the
Protective Order prior to disclosure of any confidential information
to such support personnel and shall be personally responsible for
their compliance with the terms of the Protective Order; and
(E) The person agrees to submit to the jurisdiction of the
Office for purposes of enforcing the terms of the Protective Order
and providing remedies for its breach.
(e) Filing of Executed Protective Order. The party filing a
Motion to Seal shall include with its supporting papers a copy of a
proposed Protective Order, signed by the party or its representative
of record, certifying that the party accepts and agrees to the terms
of the Protective Order. Prior to the receipt of confidential
information, any other party to the proceeding also shall file a
copy of the proposed Protective Order, signed by the party or its
representative of record, certifying that the party accepts and
agrees to the terms of the proposed Protective Order. The proposed
Protective Order shall remain in effect until superseded by a
Protective Order entered by the Board.
(f) Duty To Retain Acknowledgements. Each party to the
proceeding shall maintain a signed Acknowledgement from each person
acting on its behalf who obtains access to confidential information
after signing an Acknowledgement, as set forth herein, and shall
produce such Acknowledgements to the Office upon request.
(g) Motion to Seal. A party may file an opposition to the motion
that may include a request that the terms of the proposed Protective
Order be modified including limiting the persons who are entitled to
access under the Order. Any such opposition shall state with
particularity the grounds for modifying the proposed Protective
Order. The party seeking the modification shall have the burden of
proving that such modifications are necessary. While the motion is
pending, no disclosure of confidential information shall be made to
the persons for whom disclosure is opposed, but the filing of the
motion shall not preclude disclosure of the confidential information
to persons for whom disclosure is not opposed and shall not toll the
time for taking any action in the proceeding.
(h) Other Proceedings. Counsel for a party who receives
confidential information in a proceeding will not be restricted by
the Board from representing that party in any other proceeding or
matter before the Office. Confidential information received in a
proceeding may not be used in any other PTO proceeding in which the
providing party is not also a party.
(i) Disposal of Confidential Information. Within one month after
final termination of a proceeding, including any appeals, or within
one month after the time for appeal has expired, each party shall
assemble all copies of all confidential information it has received,
including confidential information provided to its representatives
and experts, and shall destroy the confidential information and
provide a certification of destruction to the party who produced the
confidential information.
DEFAULT PROTECTIVE ORDER
The following Standing Protective Order will be automatically
entered into the proceeding upon the filing of a petition for review
or institution of a derivation:
Standing Protective Order
This standing protective order governs the treatment and filing
of confidential information, including documents and testimony.
1. Confidential information shall be clearly marked ``PROTECTIVE
ORDER MATERIAL.''
2. Access to confidential information is limited to the
following individuals who have executed the acknowledgment appended
to this order:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants or other
persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement shall
be extended access to confidential information only upon agreement
of the parties or by order of the Board upon a motion brought by the
party seeking to disclose confidential information to that person.
The party opposing disclosure to that person shall have the burden
of proving that such person should be restricted from access to
confidential information.
(F) The Office. Employees and representatives of the Office who
have a need for access to the confidential information shall have
such access without the requirement to sign an Acknowledgement. Such
employees and representatives shall include the Director, members of
the Board and their clerical staff, other support personnel, court
reporters, and other persons acting on behalf of the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding shall not be required to sign an Acknowledgement, but
shall be informed of the terms and requirements of the Protective
Order by the person they are supporting who receives confidential
information.
3. Persons receiving confidential information shall use
reasonable efforts to maintain the confidentiality of the
information, including:
(A) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(B) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(C) Ensuring that support personnel of the recipient who have
access to the confidential information understand and abides by the
obligation to maintain the confidentiality of information received
that is designated as confidential; and
[[Page 6879]]
(D) Limiting the copying of confidential information to a
reasonable number of copies needed for conduct of the proceeding and
maintaining a record of the locations of such copies.
4. Persons receiving confidential information shall use the
following procedures to maintain the confidentiality of the
information:
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless, upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information does not qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of
the information submitted to the Board, the submitting party shall
file confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made
available to the public. The nonconfidential version of the
submission shall clearly indicate the locations of information that
has been redacted. The confidential version of the submission shall
be filed under seal. The redacted information shall remain under
seal unless, upon motion of a party and after a hearing on the
issue, or sua sponte, the Board determines that some or all of the
redacted information does not qualify for confidential treatment.
(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to
another party during discovery or other proceedings before the Board
shall be clearly marked as ``PROTECTIVE ORDER MATERIAL'' and shall
be produced in a manner that maintains its confidentiality.
(k) Standard Acknowledgement of Protective Order. The following
form may be used to acknowledge the protective orders and gain
access to information covered by a protective order:
[CAPTION]
Standard Acknowledgment for Access to Protective Order Material
I --------------------------, affirm that I have read the
Protective Order; that I will abide by its terms; that I will use
the confidential information only in connection with this proceeding
and for no other purpose; that I will only allow access to support
staff who are reasonably necessary to assist me in this proceeding;
that prior to any disclosure to such support staff I informed or
will inform them of the requirements of the Standing Protective
Order; that I am personally responsible for the requirements of the
terms of the Standing Protective Order and I agree to submit to the
jurisdiction of the Office and the United States District Court for
the Eastern District of Virginia for purposes of enforcing the terms
of the Protective Order and providing remedies for its breach.
[Signature]
Dated: January 31, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-2523 Filed 2-8-12; 8:45 am]
BILLING CODE 3510-16-P