PTAB “Quick-Fixes” for AIA Rules and Three-Part Roll-out Plan: Immediate Changes to Page Limits

On March 27, USPTO Director Michelle K. Lee issued a blog post discussing a three-part roll-out plan designed to address various comments from the IP community about the current rules and guidance for AIA proceedings. http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for. According to the Director, the first part, referred to as “quick fixes,” would be simple in scope; the second part would be a proposed-rule package that involve changes to the PTAB Trial Rules; and the final part would relate to modifications to the current Trial Practice Guide. Director Lee stated that the three phase roll-out would bring improvements to the proceedings as soon as possible.

While the “quick fixes” won’t issue until spring, the Director stated that judges will begin implementing the new procedures through scheduling orders effective immediately. These will include:

• The page limit for a petitioner’s reply brief, currently capped at 15 pages, will increase to 25 pages;
• The page limit for motions to amend, currently capped at 15 pages will also increase to 25 pages;
• Patent Owners will be allowed to include a claim appendix with motions to amend; and
• Commensurate amounts of additional pages will be available for oppositions to motions to amend and reply briefs.

Director Lee also highlighted several proposals that would be part of the second package to issue in late summer: (1) further modifications regarding motions to amend; (2) adjustments to the evidence that can be provided in the patent owner preliminary response; (3) clarification of the claim construction standard as applied to expired patents; (4) adjustments to the scope of additional discovery; (5) how to handle multiple proceedings involving the same patent; (6) use of live testimony at oral hearings; and (7) whether parties should be required to make a certification with their filings similar to a Rule 11 certification in a district court litigation. The Director particularly emphasized certain proposals regarding motions to amend, which she stated would provide a “noticeabl[e] limit” on the burden on patent owners.

Finally, regarding the proposals to the Trial Practice Guide, the Director stated that the PTAB was seeking to: (1) clarify the use of live testimony, noting that the PTAB wants to highlight the availability of such testimony; and (2) emphasize the importance of real-party-in-interest (RPI) discovery for determinations of standing and estoppel consequences. The Director also discussed plans to set up a single-judge pilot program for institution based on a concern that judges participating in a decision to institute may not be completely objective during the trial phase.