USPTO Updates PTAB Rules to Adjust Page Limits and Reflect Current Practice

On May 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a final rule package in response to public feedback, making what it classifies as "more ministerial" changes to the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. Although the USPTO will later release a proposed rule package to address "more involved changes to the rules and the Office Patent Trial Practice Guide," practitioners should recognize the "ministerial" final rule package, which is effective May 19, 2015, impacts four main aspects of the proceedings:

Paper Format

• The rule package relaxes the page limits associated with motions to amend. In particular, the rule package increases the page limit for such motions from 15 pages to 25 pages and allows for a claim listing appendix that is not included in the page limit. The rules also correspondingly increase the page limit for oppositions to motions to amend from 15 pages to 25 pages. Finally, the rules increase the page limit for replies to oppositions to motions to amend from 5 pages to 12 pages.
• The rule package relaxes the page limit for petitioner replies to patent owner responses, increasing the limit from 15 pages to 25 pages.
• The rule package mandates the use of 14-point, Times New Roman proportional font, with normal spacing.

Discovery

• The rule package clarifies that routine discovery includes the cross-examination of only affidavit testimony prepared for the PTAB trial proceeding.
• The rules also clarify that uncompelled direct testimony must be submitted in the form of an affidavit.
• The rules also clarify that either party is permitted to file testimony as an exhibit.

Procedure

• More than one back-up counsel may be designated.
• Evidence objections must be filed instead of just served.
• Excess claim fees must be paid for unchallenged claims from which a challenged claim depends.
• A statement of material fact by a party is optional.
• A party may file only a single rehearing request as a matter of right.
• Covered Business Method (CBM) proceedings can be extended beyond the statutory one-year timeframe in the case of joinder.

CBM Institution

• The rule package precludes institution of a CBM when the petitioner filed a civil action challenging the validity of a claim of the patent before filing the petition, formalizing the Board's precedential decision in SecureBuy, LLC v. CardinalCommerce Corp., Case CBM2014–00035 (PTAB Apr. 25, 2014) (Paper 12) (precedential).

The majority of this new rule package simply formalizes the PTAB's current practices. The only changes likely to have any significant impact on the proceedings are those related to format, since they will potentially make it easier for (i) patent owners to amend claims, and (ii) petitioners to address arguments in patent owner responses.