On May 26, 2020, the USPTO announced several proposed rule changes for IPR, PGR, and CBM proceedings. If implemented, the proposed rules would:
- Eliminate the presumption in favor of petitioners at the institution stage. The Board began allowing patent owners to include testimonial evidence with their preliminary responses in 2016, but since then it has viewed any issues of fact created by such evidence “in the light most favorable to the petitioner solely for purposes of deciding whether to institute.” 37 C.F.R. §§ 42.108(c), 42.208(c). The new rules would eliminate that presumption.
This is by far the most significant proposed change. If implemented, these amendments would remove a practical disincentive that has led most patent owners to reserve testimonial evidence for use post-institution. Accordingly, the proposed rule would encourage more patent owners to support their preliminary responses with testimonial evidence.
- Amend the rules to formalize existing practices regarding reply and sur-reply briefing during instituted AIA trial proceedings. Specifically, the proposed rules would amend 37 C.F.R. §§ 42.23, 42.24, 42.120, and 42.220 to permit sur-replies to principal briefs; to allow replies and sur-replies to address issues in the institution decision; and limit sur-replies to 5,600 words.
- Update the Board’s official rules to conform with SAS. The proposal would revise 37 C.F.R. §§ 42.108(a)-(b) and 42.208(a)-(b) to reflect the “all-or-nothing” institution standard that the Board has been applying since SAS Institute v. Iancu, 138 S. Ct. 1348 (2018).
The latter two changes merely formalize existing practices.
The full notice of proposed rulemaking is available here. Public comments on the proposed rules must be received on or before June 26, 2020.