[Federal Register Volume 77, Number 157 (Tuesday, August 14, 2012)]
[Rules and Regulations]
[Pages 48756-48773]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-17908]



[[Page 48755]]

Vol. 77

Tuesday,

No. 157

August 14, 2012

Part V





Department of Commerce





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Patent and Trademark Office





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37 CFR Part 42





Office Patent Trial Practice Guide; Rule

  Federal Register / Vol. 77 , No. 157 / Tuesday, August 14, 2012 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 42

[Docket No. PTO-P-2011-0094]


Office Patent Trial Practice Guide

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of practice guide.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) 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. In separate rulemakings, the United States 
Patent and Trademark Office (Office or USPTO) is revising the rules of 
practice to implement these provisions of the AIA that provide for the 
trial proceedings before the Board. The Office publishes in this notice 
a practice guide for the trial final rules to advise the public on the 
general framework of the regulations, including the structure and times 
for taking action in each of the new proceedings.

DATES: Effective Date: This practice guide applies to inter partes 
review, post-grant review, and covered business method patent review 
proceedings commencing on or after September 16, 2012, as well as 
derivation proceedings commencing on or after March 16, 2013.

FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative 
Patent Judge, Board of Patent Appeals and Interferences (will be 
renamed as Patent Trial and Appeal Board on September 16, 2012), by 
telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION:
    Executive Summary: The patent trial 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 has designed the proceedings to allow each party to determine 
the preferred manner of putting forward its case, subject to the 
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 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 Office to promulgate rules for the 
proceedings, with the PGR, IPR, and CBM rules to be in effect one year 
after AIA enactment and the derivation rules to be in effect 18 months 
after AIA enactment.
    Consistent with the statute, the Office published a number of 
notices of proposed rulemaking in February of 2012, and requested 
written comments on the Office's proposed implementation of the new 
trial proceedings of the AIA. The Office also hosted a series of public 
educational roadshows, across the country, regarding the proposed 
rules.
    Additionally, the Office published a practice guide based on the 
proposed trial rules in the Federal Register to provide the public an 
opportunity to comment. Practice Guide for Proposed Trial Rules, 77 FR 
6868 (Feb. 9, 2012) (Request for Comments) (hereafter ``Practice Guide 
for Proposed Trial Rules'' or ``Office Patent Trial Practice Guide''). 
This Office Patent Trial Practice Guide is intended to advise the 
public on the general framework of the rules, including the structure 
and times for taking action in each of the new proceedings.
    In response to the notices of proposed rulemaking and the Practice 
Guide notice, the Office received 251 submissions of written comments 
from intellectual property organizations, businesses, law firms, patent 
practitioners, and others, including a United States senator who was a 
principal author of section 18 of the AIA. The comments provided 
support for, opposition to, and diverse recommendations on the proposed 
rules. The Office appreciates the thoughtful comments, and has 
considered and analyzed the comments thoroughly. In light of the 
comments, the Office has made modifications to the proposed rules to 
provide clarity and to balance the interests of the public, patent 
owners, patent challengers, and other interested parties, in light of 
the statutory requirements and considerations, such as 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 complete the proceedings timely.
    For the implementation of sections 3, 6, 7, and 18 of the AIA that 
are related to administrative trials and judicial review of Board 
decisions, the Office is publishing the following final rules in 
separate notices in the Federal Register: (1) Rules of Practice for 
Trials before the Patent Trial and Appeal Board and Judicial Review of 
Patent Trial and Appeal Board Decisions (RIN 0651-AC70); (2) Changes to 
Implement Inter Partes Review Proceedings, Post-Grant Review 
Proceedings, and Transitional Program for Covered Business Method 
Patents (RIN 0651-AC71); (3) Transitional Program for Covered Business 
Method Patents--Definitions of Covered Business Method Patent and 
Technological Invention (RIN 0651-AC75); and (4) Changes to Implement 
Derivation Proceedings (RIN 0651-AC74). The Office also provides 
responses to the public written comments in these final rules in the 
Response to Comments sections of the notices.
    Further, the Office revised the Office Patent Trial Practice Guide 
based on the final rules. The Office has been working diligently to 
publish all of the final rules related to the new AIA trial proceedings 
and the Office Patent Trial Practice Guide in the Federal Register 
concurrently. Due to certain limitations, however, the Office Patent 
Trial Practice and the specific final rule for derivation proceedings 
will be published in the Federal Register after the other final rules. 
In particular, the specific rules for derivation, i.e., Sec. Sec.  
42.404 through 42.412, will be published at a later date.
    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 filed with the Board consistent with any 
time period required by statute and be accompanied by the evidence the 
petitioner seeks to rely upon. See, e.g., 35 U.S.C. 135(a) and 311(c), 
as amended, and Sec.  42.3 (references to Sec.  42.x or Sec.  1.x refer 
to title 37 of the Code of Federal Regulations). 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 Board acting on behalf of the Director may institute a trial 
where the petitioner establishes that the standards for instituting the 
requested trial are met taking into account any preliminary response 
filed by the patent owner. Conversely, the Board may not authorize a 
trial where the information presented in the petition, taking into 
account any patent owner preliminary response, fails to meet the 
requisite standard for instituting the trial. See 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 Board may determine how

[[Page 48757]]

the proceedings will proceed, including providing for a stay, transfer, 
consolidation, or termination of any such matter. See, 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. See, e.g., 35 U.S.C. 316(a), as amended, and 35 U.S.C. 326. 
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. Id.
    A petitioner and a patent owner may terminate the proceeding with 
respect to the petitioner by filing a written agreement with the Board, 
unless the Board has already decided the merits of the proceeding 
before the request for termination is filed. See, e.g., 35 U.S.C. 317, 
as amended, and 35 U.S.C. 327. If no petitioner remains in the 
proceeding, the Board 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 specific rules for the individual proceedings, 
the Office has taken these considerations into account. Further, the 
specific rules for the individual proceedings take into account the 
jurisdictional and timing requirements for the particular proceedings.
    General Overview of Proceedings: 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 three 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 the patent owner 
elects not to respond to the petition. The Board acting on behalf of 
the Director will determine whether to institute a trial 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 standards for the proceeding have been 
met. Further, the Board will identify, on a claim-by-claim basis, the 
grounds on which the trial will proceed. Any claim or issue not 
included in the authorization for review will not be part of the trial. 
A party dissatisfied with the Board's determination to institute a 
trial may request rehearing as to points believed to have been 
overlooked or misapprehended. See Sec.  42.71(d) and (c).
    The Board will enter a Scheduling Order (Appendix A) concurrent 
with the decision to institute a trial. The Scheduling Order will set 
due dates for the trial 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 or PGR might, consistent 
with Sec. Sec.  42.120 and 42.220, provide a three 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 
three 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] TR14AU12.000

    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 the 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

[[Page 48758]]

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. The patent 
owner may file a patent owner's response and/or a motion to amend the 
claims by the time set in the Scheduling Order. 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 then 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 Rules: The following is a general summary of the 
rules for the proceedings.

I. General Procedures

    The rules are to be construed so as to ensure the just, speedy, and 
inexpensive resolution of a proceeding and, where appropriate, the 
rules may be modified to accomplish these goals. Sec.  42.1(b); Sec.  
42.5(a) and (b).

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 the transitional program 
for covered business method reviews, which are subject to Board review 
under 35 U.S.C. 6(b), as amended, 35 U.S.C. 326(c), and Public Law 112-
29, section 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'' patents (as defined in Sec.  42.2) in derivation, IPR, 
PGR, and CBM proceedings and are thus treated separately except as 
ordered by the Board.
    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. Sec.  
42.5(d). 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. The Board encourages 
the use of conference calls to raise and resolve issues in an expedited 
manner. The Board envisions that most of the procedural issues arising 
during a proceeding will be handled during a conference call or shortly 
thereafter, i.e., in a matter of days. When arranging a conference 
call, parties should 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 order as a condition for the 
call 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 
must 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. 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. Sec.  42.10(b).
    Pro hac vice. The Board may recognize counsel pro hac vice during a 
proceeding upon a showing of good cause, and subject to the requirement 
that lead counsel is a registered practitioner. Sec.  42.10(c). The 
Board may impose other considerations as well. Id. Proceedings before 
the Office can be technically complex. For example, it is expected that 
amendments to a patent will be sought. 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.
    The Office expects that lead counsel will, and back-up counsel may, 
participate in all hearings and conference calls with the Board and 
will sign all papers submitted in the proceeding. In addition, the role 
of back-up counsel is to conduct business with the Office on behalf of 
lead counsel when lead counsel is not available. Actions not conducted 
before the Office (e.g., taking of deposition) may be conducted by lead 
or back-up counsel.

C. Electronic Filing

    Electronic filing is the default manner in which documents are to 
be filed with the Board. 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. The 
Board will publish electronic submission information on its Web site 
(www.uspto.gov/PTAB) in August of 2012. Due to system constraints, no 
single uploaded file may exceed 250 megabytes in size.
    Paper filing may be used where appropriate, but must be accompanied 
by a motion explaining the need for non-electronic filing. Sec.  
42.6(b). 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. Sec.  42.5. In the unlikely event that an 
administrative patent judge is not available to rule on the extension, 
the Board may grant an extension the day after the paper is due, which 
includes situations where electronic filing problems are shown to have 
occurred.

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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. Sec.  42.8. Where there is a change of information, a 
party must file a revised notice within 21 days of the change. Sec.  
42.8(a)(3).
    1. Real Party-in-Interest or Privy: The core functions of the 
``real party-in-interest'' and ``privies'' requirement to assist 
members of the Board in identifying potential conflicts, and to assure 
proper application of the statutory estoppel provisions. The latter, in 
turn, seeks to protect patent owners from harassment via successive 
petitions by the same or related parties, to prevent parties from 
having a ``second bite at the apple,'' and to protect the integrity of 
both the USPTO and Federal Courts by assuring that all issues are 
promptly raised and vetted. Cf. Fed. R. Civ. P. 17(a) (Advisory 
Committee Note to 1966 Amendment to Rule 17(a)) (``[T]he modern 
function of the rule in its negative aspect is simply to protect the 
defendant against a subsequent action by the party actually entitled to 
recover, and to insure generally that the judgment will have its proper 
effect as res judicata.''). The USPTO will apply traditional common-law 
principles with these goals in mind and parties will be well-served to 
factor in these considerations when determining whom to identify.
    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) (hereinafter ``Wright & 
Miller''). Such questions will be handled by the Office 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''). Courts invoke the terms ``real party-in-
interest'' and ``privy'' to describe relationships and considerations 
sufficient to justify applying conventional principles of estoppel and 
preclusion. Accordingly, courts have avoided rigid definitions or 
recitation of necessary factors. Similarly, multiple Federal Rules 
invoke the terms without attempting to define them or what factors 
trigger their application. See, e.g., Fed. R. Civ. P. 17; Fed. Cir. R. 
47.4.
    The typical common-law expression of the ``real party-in-interest'' 
(the party ``who, according to the governing substantive law, is 
entitled to enforce the right'') does not fit directly into the AIA 
trial context. See 6A Charles Alan Wright, Arthur R. Miller, Mary Kay 
Kane, & Richard L. Marcus, Federal Practice & Procedure Civil section 
1543 (3d ed. 2011) (discussing Fed. R. Civ. P. 17). That notion 
reflects standing concepts, but no such requirement exists in the IPR 
or PGR context, although it exists in the CBM context. In an IPR or PGR 
proceeding, there is no ``right'' being enforced since any entity 
(other than the patent owner) may file an IPR or PGR petition. However, 
the spirit of that formulation as to IPR and PGR proceedings means 
that, at a general level, the ``real party-in-interest'' is the party 
that desires review of the patent. Thus, the ``real party-in-interest'' 
may be the petitioner itself, and/or it may be the party or parties at 
whose behest the petition has been filed. In this regard, the Office's 
prior application of similar principles in the inter partes 
reexamination context offers additional guidance. See generally In re 
Guan et al. Inter Partes Reexamination Proceeding, Control No. 95/
001,045, Decision Vacating Filing Date (Aug. 25, 2008). Similar 
considerations apply to CBM proceedings, although the statute governing 
those proceedings also requires that the party seeking the proceeding, 
or its real party-in-interest or privy, have been sued for infringing 
the subject patent, or been charged with infringement under that 
patent.
    The notion of ``privity'' is more expansive, encompassing parties 
that do not necessarily need to be identified in the petition as a 
``real party-in-interest.'' The Office intends to evaluate what parties 
constitute ``privies'' in a manner consistent with the flexible and 
equitable considerations established under federal caselaw. Ultimately, 
that analysis seeks to determine whether the relationship between the 
purported ``privy'' and the relevant other party is sufficiently close 
such that both should be bound by the trial outcome and related 
estoppels. This approach is consistent with the legislative history of 
the AIA, which indicates that Congress included ``privies'' within the 
parties subject to the statutory estoppel provisions in an effort to 
capture ``the doctrine's practical and equitable nature,'' in a manner 
akin to collateral estoppel. In that regard, the legislative history 
endorsed the expression of ``privy'' as follows:

    The word ``privy'' has acquired an expanded meaning. The courts, 
in the interest of justice and to prevent expensive litigation, are 
striving to give effect to judgments by extending ``privies'' beyond 
the classical description. The emphasis is not on the concept of 
identity of parties, but on the practical situation. Privity is 
essentially a shorthand statement that collateral estoppel is to be 
applied in a given case; there is no universally applicable 
definition of privity. The concept refers to a relationship between 
the party to be estopped and the unsuccessful party in the prior 
litigation which is sufficiently close so as to justify application 
of the doctrine of collateral estoppel.

154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) 
(citing Cal. Physicians' Serv. v. Aoki Diabetes Research Inst., 163 
Cal.App.4th 1506 (Cal. App. 2008)); see also 157 Cong. Rec. S1376 
(daily ed. Mar. 8, 2011) (incorporating prior 2008 statement). 
Subsequent legislative history expanded on the prior discussion of 
``privy'' by noting that ``privity is an equitable rule that takes into 
account the `practical situation,' and should extend to parties to 
transactions and other activities relating to the property in 
question.'' 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of 
Sen. Kyl).
    There are multiple factors relevant to the question of whether a 
non-party may be recognized as a ``real party-in-interest'' or 
``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''). 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 section 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 
section 4451 (``The measure of control by a nonparty that justifies 
preclusion cannot be defined rigidly.''). Accordingly, the rules do not 
enumerate particular factors regarding a ``control'' theory of ``real 
party-in-interest'' or ``privy'' under the statute.
    Additionally, many of the same considerations that apply in the 
context of ``res judicata'' will likely apply in the

[[Page 48760]]

``real party-in-interest'' or ``privy'' contexts. See Gonzalez, 27 F.3d 
at 759; see generally Wright & Miller section 4451. Other 
considerations may also apply in the unique context of statutory 
estoppel. See generally, e.g., In re Arviv Reexamination Proceeding, 
Control No. 95/001,526, Decision Dismissing section 1.182 and section 
1.183 Petitions, at 6 (Apr. 18, 2011); In re Beierbach Reexamination 
Proceeding, Control No. 95/000,407, Decision on section 1.182 and 
section 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).
    The Office has received requests to state whether particular facts 
will qualify a party as a ``real party-in-interest'' or ``privy.'' Some 
fact-combinations will generally justify applying the ``real party-in-
interest'' or ``privy'' label. For example, a party that funds and 
directs and controls an IPR or PGR petition or proceeding constitutes a 
``real party-in-interest,'' even if that party is not a ``privy'' of 
the petitioner. But whether something less than complete funding and 
control suffices to justify similarly treating the party requires 
consideration of the pertinent facts. See, e.g., Cal. Physicians, 163 
Cal.App.4th at 1523-25 (discussing the role of control in the ``privy'' 
analysis, and observing that ``preclusion can apply even in the absence 
of such control''). The Office will handle such questions on a case-by-
case basis taking into consideration how courts have viewed the terms. 
Similarly, while generally a party does not become a ``real party-in-
interest'' or a ``privy'' of the petitioner merely through association 
with another party in an unrelated endeavor, slight alterations in the 
facts, as well as consideration of other facts, might result in a 
different conclusion. So, for example, if Trade Association X files an 
IPR petition, Party A does not become a ``real party-in-interest'' or a 
``privy'' of the Association simply based on its membership in the 
Association. Similarly, if Party A is part of a Joint Defense Group 
with Party B in a patent infringement suit, and Party B files a PGR 
petition, Party A is not a ``real party-in-interest'' or a ``privy'' 
for the purposes of the PGR petition based solely on its participation 
in that Group. That is not to say that Party A's membership in Trade 
Association X, or the Joint Defense Group, in those scenarios is 
irrelevant to the determination; deeper consideration of the facts in 
the particular case is necessary to determine whether Party A is a 
``real party-in-interest'' or a ``privy'' of the petitioner. Relevant 
factors include: Party A's relationship with the petitioner; Party A's 
relationship to the petition itself, including the nature and/or degree 
of involvement in the filing; and the nature of the entity filing the 
petition. In short, because rarely will one fact, standing alone, be 
determinative of the inquiry, the Office cannot prejudge the impact of 
a particular fact on whether a party is a ``real party-in-interest'' or 
``privy'' of the petitioner.
    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 
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. Sec.  42.8. 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).
    Under Sec.  42.6(e), service may be made electronically upon 
agreement of the parties. For example, the parties could agree that 
electronic filing with the Board of a document constitutes electronic 
service.

E. Public Availability and Confidentiality

    The 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. Sec.  42.14. Accordingly, a document or thing will 
be made publicly available, unless a party files a motion to seal that 
is then 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. 
Sec.  42.54.
    3. Motion To Seal: A party intending a document or thing to be 
sealed may file a motion to seal concurrent with the filing of the 
document or thing. 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 may file a motion to seal where the 
motion contains a proposed protective order, such as the default 
protective order in Appendix B. Sec.  42.54. Specifically, protective 
orders may be issued for good cause by the Board to protect a party 
from disclosing confidential information. 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, concurrent with the 
filing of the petition, file a motion to seal with a proposed 
protective order as to the confidential information. A petitioner 
filing information under seal with a petition is not required to serve 
the confidential information. Sec.  42.55.
    A petitioner may seek entry of the default protective order in 
Appendix B or may seek entry of an alternative protective order. Where 
the petitioner seeks entry of the default protective order, the patent 
owner will be given access to the confidential information prior to 
institution of the trial by agreeing to the terms of a default order. 
Sec.  42.55(a). The Board anticipates that a patent owner may use the 
Board's electronic filing system to agree to the default protective 
order and would, upon confirmation of the agreement by the Board, be 
given access to the provisionally sealed information.
    Where a petitioner files a motion to seal with the petition that 
seeks entry of a protective order other than the default protective 
order, a patent owner may only access the sealed confidential 
information prior to the institution of the trial by:
    (1) Agreeing to the terms of the protective order requested by the 
petitioner;

[[Page 48761]]

    (2) Agreeing to the terms of a protective order that the parties 
file jointly; or
    (3) Obtaining entry of a protective order (e.g., the default 
protective order).
    For example, the patent owner could arrange a conference call with 
the Board and opposing party, and provide a suitable basis for entering 
the default protective order as opposed to the petitioner's proposed 
protective order. Sec.  42.55(b). The Board anticipates that a patent 
owner may use the Board's electronic filing system to agree to the 
protective order requested by the petitioner and would, upon 
confirmation of the agreement by the Board, be given access to the 
provisionally sealed information. Similarly, the Board anticipates that 
a patent owner may use the Board's electronic filing system to file a 
protective order that the parties jointly agree to and would, upon 
confirmation of the agreement by the Board, be given access to the 
provisionally sealed information. Alternatively, the patent owner would 
be given access on entry of a protective order by the Board.
    The 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 
following a trial. 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. 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 notice purposes. The rule 
encourages parties to redact sensitive information, where possible, 
rather than seeking to seal entire documents.
    7. Derivation: A party in a derivation submitting dates of 
conception to establish inventorship may wish to file the information 
under seal. Where the dates of conception are filed under seal, a party 
may request that an opponent not be given access to the conception 
dates until the opponent's conception dates have been provided to the 
Board.

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, beginning with the 
patent owner. The sequenced discovery allows parties to conduct 
meaningful discovery before they are required to submit their 
respective motions and oppositions during the trial. 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 declarants; and (3) relevant 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.
    (a) Inconsistent Statements: The following situations exemplify 
instances where disclosures of inconsistent statements are to be made. 
Example 1: where a petitioner relies upon an expert affidavit alleging 
that a method described in a patent cannot be carried out, the 
petitioner would be required to provide any non-privileged work 
undertaken by, or on behalf of, the petitioner that is inconsistent 
with the contentions in the expert's affidavit. Example 2: where a 
patent owner relies upon surprising and unexpected results to rebut an 
allegation of obviousness, the patent owner should provide the 
petitioner with non-privileged evidence that is inconsistent with the 
contention of unexpected properties.
    (b) Witness Expenses: The burden and expense of producing a witness 
for redirect or cross-examination should normally fall on the party 
presenting the witness. Thus, a party presenting a witness's testimony 
by affidavit should arrange to make the witness available for cross-
examination. This applies to witnesses employed by a party as well as 
experts and non-party witnesses. If there are associated expenses such 
as expert witness fees or travel, those should be borne by the party 
presenting the testimony. Should the witness's testimony be presented 
by transcript, the same rules apply, and the witness fees and expenses 
should be borne by the presenting party.
    (c) Document Translation: All proceedings before the Board will be 
conducted in English. Translations therefore must be provided for: (1) 
Those documents produced in discovery under Sec.  42.51; and (2) all 
documents relied on, or otherwise used, during the proceedings. Unless 
accompanied by an English language translation, such documents in a 
language other than English will not be considered by the Board.
    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. Sec.  42.51(b)(2). The types of discovery available 
under the Federal Rules of Civil Procedure can be sought by the 
parties. 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. Id. 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. See Appendix 
D for guidance on compelled testimony.
    4. Mandatory Initial Disclosures: Section 42.51(a) provides for 
mandatory initial disclosures, either by agreement (subparagraph 
(a)(1)) or, where the parties fail to reach an agreement, by motion, if 
granted (subparagraph (a)(2)). To proceed under Sec.  42.51(a)(1), the 
parties must submit any agreement reached on initial disclosures no 
later than the filing of the patent owner's preliminary response, or by 
the expiration of the time period for filing such a response. See Sec.  
42.51(a)(1)(i).
    Where the parties agree to mandatory initial disclosures under 
Sec.  42.51(a)(1), two options are available as follows:

[[Page 48762]]

Option 1
    This first option is modeled after Rule 26(a)(1)(A) of the Federal 
Rules of Civil Procedure, and requires disclosure of the following 
information: (1) the name and, if known, the address and telephone 
number of each individual likely to have discoverable information--
along with the subjects of that information--that the disclosing party 
may use to support its claims or defenses, unless the use would be 
solely for impeachment; and (2) a copy--or a description by category 
and location--of all documents, electronically stored information, and 
tangible things that the disclosing party has in its possession, 
custody, or control and may use to support its claims or defenses, 
unless the use would be solely for impeachment.
Option 2
    This second option is more extensive, and includes the following 
disclosures listed under both items I and II:
    I. If the petition seeks cancellation of one or more claims in 
whole or part on the basis of the existence of an alleged prior non-
published public disclosure, the petitioner will provide a statement: 
(1) Identifying, to the extent known by the petitioner, the names and 
information sufficient to contact all persons other than those offering 
affidavits or declarations who are reasonably likely to know of the 
alleged prior non-published public disclosure; (2) indicating which of 
such persons are within the control of petitioner, or who have 
otherwise consented to appear for a testimony in connection with the 
proceeding; (3) indicating which, if any, of such persons are 
represented by petitioner's counsel; (4) identifying all documents and 
things within petitioner's possession, custody, or control referring to 
or relating to the alleged prior non-published public disclosure; and 
(5) identifying all things relating to the alleged prior non-published 
public disclosure, including a complete description, photographs, the 
chemical analysis (if the chemical composition is in issue), and 
computer code (for computer-related subject matter), and their 
locations, and whether petitioner will produce such things for 
inspection, analysis, testing, and sampling.
    II. If the petition seeks cancellation of one or more claims in 
whole or in part on the basis of the alleged obviousness of one or more 
of the claims, the petitioner will provide a statement: (1) 
identifying, to the extent known by the petitioner, the names and 
information sufficient to contact all persons other than those offering 
affidavits or declarations who are reasonably likely to have 
information regarding the secondary indicia of non-obviousness; (2) 
indicating which of such persons are within the control of petitioner, 
or have otherwise consented to appear for a testimony in connection 
with the proceeding; (3) indicating which, if any, of such persons are 
represented by petitioner's counsel; (4) identifying all documents and 
things within petitioner's possession, custody, or control referring to 
or relating to such secondary indicia of non-obviousness; and (5) 
identifying all things relating to the secondary indicia of non-
obviousness, including a complete description, photographs, the 
chemical analysis (if the chemical composition is in issue), and 
computer code (for computer-related subject matter), and their 
locations, and whether petitioner will produce such things for 
inspection, analysis, testing, and sampling.
    Under Sec.  42.51(a)(1)(ii), upon institution of a trial, the 
parties may automatically take discovery of the information identified 
in the initial disclosures. Accordingly, the initial disclosures of a 
party shall be filed as exhibits as soon as reasonably practicable to 
permit discovery related to that information. See Sec.  42.51(a)(1)(i).
    5. Live Testimony: Cross-examination may be ordered to take place 
in the presence of an administrative patent judge, which may occur at 
the deposition or oral arugment. 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 previous contested cases before the Board include cases 
where derivation is an issue, where misconduct is alleged to have 
occurred during the proceeding, or where testimony is given through an 
interpreter. See Appendix D for guidance on testimony.
    6. Times and Locations for Witness Cross-Examination: Under Sec.  
42.53(c)(1), the default time limits for compelled direct examination, 
cross-examination, and redirect examination are seven hours for direct 
examination, four hours for cross-examination, and two hours for 
redirect examination. Similarly, under Sec.  42.53(c)(2), the default 
time limits for cross-examination, redirect examination, and recross-
examination for uncompelled direct testimony are seven hours for cross-
examination, four hours for redirect examination, and two hours for 
recross-examination. See Appendix D: Testimony Guidelines, for more 
information.
    The rules do not provide for a specific location for taking 
testimony other than providing that the testimony may be taken at any 
reasonable location in the United States. The Board expects that the 
parties will be able to agree upon a reasonable location but will be 
available to handle the issue, typically via conference call, where the 
parties are unable to agree.
    7. E-Discovery: The cost of e-discovery in patent infringement 
cases has led a number of courts to adopt special e-discovery rules. 
Notably, the Federal Circuit Advisory Committee drafted and adopted a 
Model Order Limiting E-Discovery in Patent Cases that is available on 
the Federal Circuit's Web site: www.cafc.uscourts.gov. See also Federal 
Rule of Evidence 502. In the interest of promoting economic and 
procedural efficiency in these proceedings, the Office adopts a default 
Model Order Regarding E-Discovery (Appendix C) based on the Federal 
Circuit's Model Order, modified to reflect the differences in statutory 
requirements. See also Rule 502 of the Federal Rules of Evidence. 
Except for routine discovery under the provisions of Sec.  42.51(b)(1), 
it is expected that the default Model Order will be entered in a 
proceeding whenever discovery of Electronically Stored Information 
(ESI) is sought by the parties, whether under the other discovery 
provisions of Sec.  42.51, or the compelled discovery provisions of 
Sec.  42.52. Should a party desire to obtain production of ESI as part 
of additional discovery under Sec.  42.51, Sec.  42.52, or any other 
provision of the rules, the matter should be raised with the Board in a 
timely fashion before the discovery is scheduled to take place.

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. Sec.  42.20(a).
    2. Prior authorization: Generally, a motion will not be entered 
without prior Board authorization. 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

[[Page 48763]]

automatically granted, without a conference with the Board, 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. Typically, the Board will decide procedural 
issues raised in a conference call during the call itself or shortly 
thereafter, thereby avoiding the need for additional briefing. 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, patent owner preliminary 
responses, patent owner responses, oppositions, and replies filed in 
proceedings are subject to page limits in order to streamline the 
proceedings. Sec.  42.24. The rules set a limit of 60 pages for 
petitions requesting inter partes reviews and derivation proceedings, 
80 pages for petitions requesting post-grant review and covered 
business method patent reviews, and 15 pages for motions. Sec.  
42.24(a). Patent owner preliminary responses to a petition and patent 
owner responses to a petition are limited to an equal number of pages 
as the corresponding petition, and oppositions are limited to an equal 
number of pages as the corresponding motion. Sec.  42.24(b). Replies to 
patent owner responses to petitions are limited to 15 pages and replies 
to oppositions are limited to five pages. 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 concise, 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.
    The Office provides the following practical guidance regarding 
compliance with the page limits. A party is not required to submit a 
statement of material fact in its briefing. Sec.  42.22. Further, 
double spacing is not required for claim charts. Sec.  42.6(a)(2)(iii).
    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 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 infrared spectroscopy 
graphs, high-performance liquid-chromatography data, etc. In addition 
to providing the explanation required in Sec.  42.65, a party relying 
on a test or data should provide any other information the party 
believes would assist the Board in understanding the significance of 
the test or the data.
    6. Objective 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 will review any objective evidence of nonobviousness 
proffered by the patent owner where appropriate.

B. Petition

    Proceedings begin with the filing of a petition. The petition lays 
out the petitioner's grounds for review and supporting evidence, on a 
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. See, e.g., 
Sec.  42.106. Generally, the standards required for a petition are 
those set by statute for the proceeding requested. See, e.g., 35 U.S.C. 
312(a). 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. Sec.  42.106. A complete 
petition for IPR requires that the petitioner certify that the patent 
is eligible for IPR and that the petitioner is not barred or estopped 
from requesting the review, and that the petitioner identify the claims 
being challenged and the specific basis for the challenge. Sec.  
42.104. Similar petition requirements apply to PGR (Sec.  42.204) and 
derivations (Sec.  42.404). CBM proceedings also require a petition 
demonstrate that the patent for which review is sought is a covered 
business method patent. Sec.  42.304.
    2. Burden of Proof for Statutory Institution Thresholds: The burden 
of proof in a proceeding before the Board is a preponderance of the 
evidence standard. 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. 
Sec. Sec.  42.104, 42.204, 42.304, and 42.405. Additionally, a 
petitioner must identify each claim that is challenged and the specific 
statutory grounds on which each 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. Sec. Sec.  42.104(b), 
42.204(b), and 42.304(b).
    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. Sec.  42.304(a). Covered 
business

[[Page 48764]]

method patents by definition 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. 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, motion, patent owner preliminary response, 
patent owner response, opposition, or reply count towards applicable 
page limits, but are not required to be double-spaced, e.g., to reduce 
the number of pages in a petition, claim charts in the petition may be 
single-spaced. A claim chart from another proceeding that is submitted 
as an exhibit, however, will not count towards page limits.
    6. Claim Construction: Regarding the need for a claim construction, 
where appropriate, it may be sufficient for a party to provide a simple 
statement that the claim terms are to be given their broadest 
reasonable interpretation, as understood by one of ordinary skill in 
the art and consistent with the disclosure. Alternatively, where a 
party believes that a specific term has meaning other than its plain 
meaning, the party should provide a statement identifying a proposed 
construction of the particular term and where the disclosure supports 
that meaning.
    The Office has for decades employed the broadest reasonable 
interpretation standard to construe claims before the Office, and it 
will continue to do so in IPR, PGR, and CBM proceedings for construing 
challenged claims as well as any amended or new claims. Sec. Sec.  
42.100(b), 42.200(b), and 42.300(b). This approach ensures that the 
public can clearly understand the outer limits applicants and patentees 
will attribute to their claims. On the other hand, inconsistent results 
would become a major issue if the Office adopted a standard of claim 
construction other than the broadest reasonable interpretation for IPR, 
PGR, and CBM proceedings. As the AIA contemplates, there may be 
multiple proceedings involving related patents or patent applications 
in the Office at a particular time. For example, there may be an IPR of 
a patent that is also subject to an ex parte reexamination, where the 
patent is part of a family of co-pending applications all employing the 
same claim terminology. The Office applies the broadest reasonable 
interpretation standard in those proceedings, and major difficulties 
would arise where the Office is handling multiple proceedings with 
different applicable claim construction standards.
    An essential purpose of the broadest reasonable claim 
interpretation standard in the amendment process is to encourage a 
patent owner to fashion clear, unambiguous claims. Only through the use 
of the broadest reasonable claim interpretation standard can the Office 
ensure that uncertainties of claim scope are removed or clarified. 
Since patent owners have the opportunity to amend their claims during 
IPR, PGR, and CBM trials, unlike in district court proceedings, they 
are able to resolve ambiguities and overbreadth through this 
interpretive approach, producing clear and defensible patents at the 
lowest cost point in the system. Patent owners in IPR, PGR, and CBM 
proceedings will be permitted to file a first motion to amend the 
patent, after conferring with the Board. Sec. Sec.  42.121(a) and 
42.221(a). Moreover, although there is no need to permit multiple 
opportunities to amend to justify the application of the broadest 
reasonable interpretation standard in an Office proceeding, patent 
owners in IPR, PGR, and CBM proceedings may file an additional motion 
to amend when there is a good cause showing, or a joint request of the 
petitioner and the patent owner to materially advance a settlement. 
Sec. Sec.  42.121(c) and 42.221(c). Thus, the Board will apply the 
broadest reasonable interpretation standard during IPR, PGR, and CBM 
proceedings, consistent with the Office's practice in other 
proceedings.

C. Patent Owner Preliminary Response

    For IPR, PGR, and CBM proceedings, a patent owner may file a 
preliminary response no later than three months after the grant of a 
filing date. Sec. Sec.  42.107(b) and 42.207(b). The preliminary 
response may present evidence other than new testimonial evidence to 
demonstrate that no review should be instituted. Sec. Sec.  42.107(c) 
and 42.207(c). New testimonial evidence may be permitted where a party 
demonstrates that such evidence is in the interests of justice. For 
example, the Board may permit new testimonial evidence where it 
addresses issues relating to the petitioner's standing, or where the 
Board determines that consideration of the identified evidence is 
necessary in the interests of justice as the evidence demonstrates that 
the trial may not be instituted.
    Potential patent owner 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 patent owner preliminary 
response. 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

[[Page 48765]]

Board's decision on institution would be based solely on the remaining 
claims. See Sony Computer Entm't Am. Inc. v. Dudas, 2006 WL 1472462 
(E.D.Va. 2006).

D. Institution of Review

    1. Statutory Threshold Standards: Generally, the Director may 
institute a proceeding where a petitioner meets the threshold 
standards. There is a different statutory threshold standard for 
institution of each type of proceeding. Each of the statutory threshold 
standards is 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 
Board room to exercise 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. The ``more likely 
than not'' standard requires greater than 50% chance of prevailing. In 
addition, 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 
AIA 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, except that the term does 
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. 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. Sec.  42.4(a). In instituting the 
trial, the Board will consider whether or not a party has satisfied the 
relevant statutory institution standard. As part of its consideration, 
the Board may take into account whether the same or substantially the 
same prior art or arguments were previously presented to the Office 
under 35 U.S.C. 325(d).
    The Board, in determining whether to institute, may take into 
account whether the review could be completed timely. For example, the 
Board may decline to institute a proceeding where the Board determines 
that it could not complete the proceeding timely. Specifically, the 
Board could exercise its discretion to decline to institute a petition 
that seeks review of several hundred claims based upon a thousand 
references and the patent owner demonstrates that a determination of 
patentability would require testimony of dozens of non-party controlled 
witnesses in foreign countries for which the testimony would need to be 
compelled.
    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 standards for the proceeding have been met. 
Further, the Board will identify, on a claim-by-claim basis, the 
grounds on which the trial will proceed. Any claim or issue not 
included in the authorization for review is not part of the trial.
    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 standards were not met, although this may not 
be necessary in all cases. A party dissatisfied with a decision whether 
or not to institute 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 Sec.  42.71(c).
    4. Scheduling Order: 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. 
Furthermore, the parties may request changes to the due dates at the 
initial conference call, and stipulate different dates for Due Dates 1 
through 5 (earlier or later, but no later than Due Date 6). See 
Appendix A.

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 
before the motions are authorized to be filed 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

[[Page 48766]]

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. 35 U.S.C. 135(b), 
as amended.
    The patent owner response is filed as an opposition to the petition 
and is subject to the page limits provided in Sec.  42.24. 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 will file a request 
for adverse judgement. Sec.  42.73(b).

G. Motions To Amend

    1. IPR, PGR, and CBM Amendments: Patent owners in IPR, PGR, and CBM 
may file motions to amend the claims subject to certain conditions. 
Sec. Sec.  42.121 and 42.221.
    First Motion to Amend: Although patent owners may file a first 
motion to amend and need not obtain prior Board authorization, the 
patent owner is still required to confer with the Board before filing 
the motion. Sec.  42.121(a) or 42.221(a). During this conference call, 
it is envisioned that the judge would provide guidance to the patent 
owner and petitioner regarding the motion including how the filing of 
the motion will impact the schedule. For example, if a patent holder 
files a motion to amend the claims, adjustment to the schedule and 
authorization to conduct additional discovery may be appropriate.
    Additional Motion to Amend. Patent owners seeking to file any 
additional motion to amend claims in the patent under Sec.  42.121(c) 
or 42.221(c) must seek authorization from the Board to file the motion 
to amend. The filing of the additional motion typically would be 
authorized if a joint request by the petitioner and patent owner is 
made to materially advance a settlement. Alternatively, filing of the 
additional motion may be authorized on a showing of good cause. In 
determining whether to authorize such an additional motion to amend, 
the Board will consider, among other factors, whether a petitioner has 
submitted supplemental information after the time period set for filing 
a motion to amend in Sec.  42.121(a)(1) or 42.221(a)(1). For example, 
in the event that the petitioner is authorized to submit additional 
information that was not available to the petitioner before the 
petition was filed regarding the patentability of an original claim, 
the entry of the additional evidence will increase the likelihood that 
an additional motion to amend will be authorized. Other factors, such 
as the time remaining for the trial, the degree to which the additional 
evidence impacts the patentability of the claims being sought to be 
amended, and whether the additional evidence was known to the patent 
owner before the time period set in Sec. Sec.  42.121(a) or 42.221(a) 
expired, may also be considered in deciding whether the motion should 
be authorized.
    Due Date. A motion to amend must be filed no later than the time 
period for filing a patent owner response, unless a different due date 
is provided in a Board order. Sec.  42.121(a) or 42.221(a). The Office 
envisions that most motions to amend will be due three months after a 
trial is instituted.
    Contents of Motion To Amend. Any motion to amend must also comply 
the content requirements of Sec. Sec.  42.121(b) or 42.221(b). Sections 
42.121(b) and 42.221(b) require that any motion to amend include a 
claim listing, show the changes being sought clearly, and describe how 
the original disclosure of the patent and any relied upon prior 
application supports each claim that is added or amended. A patent 
owner may not enlarge the scope of the claims of the patent or add new 
matter, 35 U.S.C. 316(d)(3) and 326(d)(3), and it is envisioned that 
the amendment that will be sought by most patent owners is a 
replacement of a set of broader claims with a set of narrower claims. 
Where a motion seeks to replace an original patent claim with a new 
claim, the new claim should be identified as a proposed substitute 
claim and all changes relative to the original claim clearly discussed. 
Any motion to amend must also set forth the support in the original 
disclosure of the patent as well as any application for which benefit 
of the filing date of the earlier filed disclosure is sought.
    Claim Construction. The Board will interpret claims using the 
broadest reasonable construction, which is consistent with the statute 
and legislative history of the AIA. See, e.g., 35 U.S.C. 316(a)(2) and 
(a)(9), as amended, and Sec.  42.100(b). In certain circumstances, 
claim construction under the broadest reasonable interpretation will 
differ from that of district court. A patent owner, however, will have 
opportunities to amend its claims during an administrative trial before 
the Board. See, e.g., Sec.  42.121. When filing a motion to amend, a 
patent owner may demonstrate that the scope of the amended claim is 
substantially identical to that of the original patent claim, as the 
original patent claim would have been interpreted by a district court. 
In such cases, a patent owner may request that the Board determine that 
the amended claim and original patent claim are substantially identical 
within the meaning of 35 U.S.C. 252.
    2. Amendments in Derivation Proceedings: The filing of a motion to 
amend claims by a petitioner or respondent in a derivation proceeding 
will be authorized upon a showing of good cause. Sec.  42.20. 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 a request to cancel all of a party's disputed 
claims will be treated as a request for adverse judgment. Sec.  
42.73(b).
    3. General Practice Tips on Amendments: Motions to amend claims are 
expected to be filed by the due dates set for filing a patent owner 
response. For authorization to file a motion to amend sought later in 
the proceeding, a demonstration of good cause will be required. Motions 
to amend 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. To reduce the number of issues in dispute, however, motions 
to cancel claims will generally be permitted even late in the 
proceeding, as will motions to amend to correct simple and obvious 
typographical errors.
    A motion to amend must be accompanied by the proposed amendment. 
See, e.g., Sec.  42.121(b). Claims filed by amendments should be filed 
as substitute claims. The amendment should clearly state whether each 
claim is ``original,'' ``cancelled,'' ``replaced by proposed 
substitute,'' ``proposed substitute for original claim X,'' or 
``proposed new claim.''

[[Page 48767]]

    Amendments should clearly state where the specification and any 
drawings support all the limitations in the proposed substitute claims. 
If the Board is unable to determine how the specification and drawings 
support the proposed substitute claims, the motion to amend may be 
denied.
    Motions to amend 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. Moreover, a motion to amend may be denied, without 
prejudice, if it is determined that patent owner's original claims are 
patentable.
    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. Sec. Sec.  42.121(a) and 42.221(a). 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 the invention.
    The following is an example of what may be included in a motion to 
amend. The example sets forth a proposed substitute claim that replaces 
original patent claims 1-3, a proposed substitute claim that replaces 
original patent claim 4, and a proposed new claim reciting newly 
claimed subject matter.
    Original patent claims:
    Claim 1: A bucket comprising:
    A shell; and
    an attached handle.
    Claim 2: The bucket of claim 1 wherein the shell is made of wood.
    Claim 3: The bucket of claim 1 wherein the handle is made of metal.
    Claim 4: The bucket of claim 1 wherein the bucket has a volume of 
2-5 gallons.
    Claim listing in a motion to amend:
    Claims 1-4 (cancelled).
    Claim 5 (substitute for original claims 1-3): A bucket comprising:
    A shell made of wood; and
    an attached handle made of metal.
    Claim 6 (substitute for original claim 4): The bucket of claim 5 
wherein the bucket has a volume of 2-5 gallons.
    Claim 7 (new claim) The bucket of claim 5 wherein the metal handle 
is at least partially made of alloy X.
    Discussion of proposed changes:
    Proposed claim 5 combines the features originally claimed in claims 
1-3 into a single claim. Proposed claim 6 further defines proposed 
claim 5 by reciting the limitation originally recited in claim 4.
    Proposed claim 7 further defines the invention of proposed claim 5 
by requiring the metal handle to be at least partially made of alloy X.
    Support for claimed subject matter.
    Paragraph 14 of the original disclosure of the application which 
issued as the patent under review describes an embodiment where the 
shell of the bucket is made of wood and the handle of the bucket is 
made of metal. Paragraph 15 of the same specification describes a 
volume of 2-5 gallons as a useful volume for the bucket described in 
the specification. Paragraph 32 of the same specification describes the 
use of alloy X in making the metal handle.
    Parent application X similarly describes an embodiment where the 
shell of the bucket is made of wood and the handle is made of metal at 
paragraph 14. Parent application X does not describe a bucket having a 
volume of 2-5 gallons or alloy X.

H. Petitioner Opposition to Amendment

    A petitioner will be afforded an opportunity to fully respond to a 
patent owner's motion to amend. The time for filing an opposition 
generally will be set in a Scheduling Order. No authorization is needed 
to file an opposition to a motion to amend. Petitioners may respond to 
new issues arising from proposed substitute claims including evidence 
responsive to the amendment. 35 U.S.C. 316(a) and 326(a). This includes 
the submission of new expert declarations that are directed to the 
proposed substitute claims.

I. Petitioner Reply to Patent Owner Response and Patent Owner Reply to 
Opposition To Amend

    A reply may only respond to arguments raised in the corresponding 
opposition. 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 prior filing.

J. Other 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 with the Board and opposing party to 
discuss the requested relief with the judge handling the proceeding.
    When filing the motion, the party must comply with the appropriate 
requirements. For example, a motion to submit supplemental information 
must meet the requirements of Sec.  42.123 or Sec.  42.223: (1) A 
request for the authorization to file a motion to submit supplemental 
information is made within one month of the date the trial is 
instituted; and (2) the supplemental information must be relevant to a 
claim for which the trial has been instituted. Further, a party seeking 
to submit supplemental information more than one month after the date 
the trial is instituted, must request authorization to file a motion to 
submit the information. Such a motion to submit supplemental 
information must show why the supplemental information reasonably could 
not have been obtained earlier, and that consideration of the 
supplemental information would be in the interests-of-justice. Sec.  
42.123(b) or Sec.  42.223(b).

K. Challenging Admissibility

    A party wishing to challenge the admissibility of evidence must 
object timely to the evidence at the point it is offered and then 
preserve the objection by filing a motion to exclude the evidence. 
Sec.  42.64(a), (b)(1), and (c). The time for filing a motion to 
exclude evidence will be set in the Scheduling Order. A motion to 
exclude evidence must:
    (a) Identify where in the record the objection originally was made;
    (b) Identify where in the record the evidence sought to be excluded 
was relied upon by an opponent;
    (c) Address objections to exhibits in numerical order; and
    (d) Explain each objection.
    A motion to exclude must explain why the evidence is not admissible 
(e.g., relevance or hearsay) but may not be used to challenge the 
sufficiency of the evidence to prove a particular fact.

L. Observations on Cross-Examination

    In the event that cross-examination occurs after a party has filed 
its last substantive paper on an issue, such cross-examination may 
result in testimony that should be called to the Board's attention, but 
the party does not

[[Page 48768]]

believe a motion to exclude the testimony is warranted. The Board may 
authorize the filing of observations to identify such testimony and 
responses to observations, as defined below.
    The party taking the cross-examination files the observations. The 
opposing party may file a response to an observation. The opposing 
party may not file observations without express prior authorization.
    An observation should be a concise statement of the relevance of 
identified testimony to an identified argument or portion of an exhibit 
(including another part of the same testimony). Any response should be 
equally concise. An observation (or response) is not an opportunity to 
raise new issues, re-argue issues, or pursue objections. Each 
observation should be in the following form:

    In exhibit --, on page --, lines--, the witness testified --. 
This testimony is relevant to the -- on page -- of --. The testimony 
is relevant because --.

    The entire observation should not exceed one short paragraph. The 
Board may refuse entry of excessively long or argumentative 
observations (or responses).

M. 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 wheel chair, 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 Division 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 oral argument, particularly if the argument is 
recorded.
    Live testimony. The Board does not envision that live testimony is 
necessary at oral argument. However, parties may file a motion for live 
testimony in appropriate situations.
    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 argument.

N. 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. 35 
U.S.C. 317(a), as amended, and 35 U.S.C. 327.

O. 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 proceeding.
    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.

P. Rehearing Requests

    A party dissatisfied with a decision of the Board may file a 
request for rehearing. 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. The opposing party should not 
file a response to a request for rehearing absent a request from the 
Board. The Board envisions that, absent a need for additional briefing 
by an opponent, requests for rehearing will be decided approximately 
one month after receipt of the request.

APPENDIX A-1: Scheduling Order for Inter Partes Review, Post-Grant 
Review, and Covered Business Method Patents Review (based on the 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 (Sec.  
42.64(b)(1)), to supplement evidence (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--
    a. A patent owner's response to the petition, and
    b. A motion to amend the patent.
    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 the 
motion to amend, filed by petitioner under Sec.  42.23 must be filed 
by DUE DATE 2.

3. DUE DATE 3

    The patent owner must file any reply to the petitioner's 
opposition to patent owner's motion to amend by DUE DATE 3.

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) by DUE DATE 4. Sec.  42.20.
    b. Each party must file any motion to exclude evidence (Sec.  
42.64(c)) and any request for oral argument (Sec.  42.70(a)) by DUE 
DATE 4.

5. DUE DATE 5

    a. The patent owner must file any reply to a petitioner 
observation on cross-examination testimony by DUE DATE 5.
    b. Each party must file any opposition to a motion to exclude 
evidence by DUE DATE 5.

[[Page 48769]]

6. DUE DATE 6

    Each party must file any reply for a motion to exclude evidence 
by DUE DATE 6.

B. CROSS-EXAMINATION

    Except as the parties might otherwise agree, for each due date--
    1. Cross-examination begins after any supplemental evidence is 
due. Sec. Sec.  42.64(b) and 42.53(d)(2).
    2. Cross-examination ends no later than a week before the filing 
date for any paper in which the cross-examination testimony is 
expected to be used. Id.

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:
    Patent owner's response to the          3 months.
     petition.
    Patent owner's motion to amend the
     patent.
------------------------------------------------------------------------
DUE DATE 2:
    Petitioner's reply to patent owner      3 months.
     response to petition.
    Petitioner's opposition to motion to
     amend.
------------------------------------------------------------------------
DUE DATE 3:
    Patent owner's reply to petitioner      1 month.
     opposition.
------------------------------------------------------------------------
DUE DATE 4:
    Petitioner's motion for observation     3 weeks.
     regarding cross-examination of reply
     witness.
    Motion to exclude evidence............
    Request for oral argument.............
------------------------------------------------------------------------
DUE DATE 5:
    Patent owner's response to observation  2 weeks.
    Opposition to motion to exclude.......
------------------------------------------------------------------------
DUE DATE 6:
    Reply to opposition to motion to        1 week.
     exclude.
------------------------------------------------------------------------
DUE DATE 7:
    Oral argument.........................  Set on request.
------------------------------------------------------------------------

APPENDIX A-2: Scheduling Order for Derivation Proceedings.

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 (Sec.  
42.64(b)(1)), to supplement evidence (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 motion to amend by DUE DATE 2.

3. DUE DATE 3

    The respondent must file any reply to the petitioner's 
opposition by DUE DATE 3.

4. DUE DATE 4

    a. The petitioner must file any observation on the cross-
examination testimony of a reply witness (see section C, below) by 
DUE DATE 4.
    b. Each party must file any motion to exclude evidence (Sec.  
42.64(c)) and any request for oral argument (Sec.  42.70(a)) by DUE 
DATE 4.

5. DUE DATE 5

    a. The respondent must file any response to a petitioner 
observation on cross-examination testimony by DUE DATE 5.
    b. Each party must file any opposition to a motion to exclude 
evidence by DUE DATE 5.

6. DUE DATE 6

    Each party must file any reply for a motion to exclude evidence 
by DUE DATE 6.

B. CROSS-EXAMINATION

    Except as the parties might otherwise agree, for each due date--
    1. Cross-examination begins after any supplemental evidence is 
due. Sec. Sec.  42.64(b) and 42.53(d)(2).
    2. Cross-examination ends no later than a week before the filing 
date for any paper in which the cross-examination testimony is 
expected to be used. Id.

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:
    Respondent response to the petition...  3 months.
    Respondent motion to amend............
------------------------------------------------------------------------
DUE DATE 2:
    Petitioner reply to Respondent          3 months.
     response to petition.
    Petitioner opposition to Respondent's
     motion to amend.
------------------------------------------------------------------------
DUE DATE 3:
    Respondent reply to petitioner          1 month.
     opposition.
------------------------------------------------------------------------
DUE DATE 4:
    Petitioner motion for observation       3 weeks.
     regarding cross-examination of reply
     witness.
    Motion to exclude.....................
    Request for oral argument.............
------------------------------------------------------------------------
DUE DATE 5:
    Respondent response to observation....  2 weeks.
    Opposition to motion to exclude.......
------------------------------------------------------------------------
DUE DATE 6:
    Reply to opposition to motion to        1 week.
     exclude.
------------------------------------------------------------------------
DUE DATE 7:
    Oral argument.........................  Set on request.
------------------------------------------------------------------------

APPENDIX B: Protective Order Guidelines (based on the 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.

[[Page 48770]]

    (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:
    (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 abide by the 
obligation to maintain the confidentiality of information received 
that is designated as confidential; and
    (D) 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, which 
similarly must be kept secure.
    (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 do 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 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 providing testimony in a 
proceeding may, on the record during the testimony, preliminarily 
designate the entirety of the person's testimony and all 
transcriptions thereof as confidential, pending further review. 
Within ten days of the receipt of the transcript of the testimony, 
that person, or that 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.

[[Page 48771]]

    (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, however, may not be used in any other Office 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 abide by the 
obligation to maintain the confidentiality of information received 
that is designated as confidential; and
    (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 do not to 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.
    (j) Standard Acknowledgement of Protective Order. The following 
form may be used to acknowledge a protective order and gain access 
to information covered by the 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 Protective Order; that I am personally 
responsible for the requirements of the terms of the 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]

APPENDIX C: Model Order Regarding E-Discovery in Trials Before the 
Patent Trial and Appeal Board

    The Board pursuant to Sec.  42.5 orders as follows:
    1. This Order supplements all other discovery rules and orders. 
It streamlines Electronically Stored Information (ESI) production to 
promote ``the just, speedy, and inexpensive resolution'' of this 
proceeding in a manner consistent with Sec.  42.1.
    2. This Order may be modified for good cause. The parties shall 
jointly submit any

[[Page 48772]]

proposed modifications within one month after the initiation date of 
the proceeding or by the date of the initial conference call, 
whichever is earlier. If the parties cannot resolve their 
disagreements regarding these modifications, the parties shall 
submit their competing proposals and a summary of their dispute 
within the specified time period.
    3. Costs will be shifted for disproportionate ESI production 
requests. Likewise, a party's nonresponsive or dilatory discovery 
tactics will be cost-shifting considerations. See 35 U.S.C. 
316(a)(6), as amended, and 326(a)(6).
    4. A party's meaningful compliance with this Order and efforts 
to promote efficiency and reduce costs will be considered in cost-
shifting determinations.
    5. Unless otherwise authorized by the Board or agreed to by the 
parties, any production of ESI pursuant to Sec. Sec.  42.51 or 42.52 
shall not include metadata. However, fields showing the date and 
time that the document was sent and received, as well as the 
complete distribution list, shall generally be included in the 
production if such fields exist.
    6. General ESI production under Sec. Sec.  42.51 and 42.52 (with 
the exception of routine discovery under Sec.  42.51(b)(1)) shall 
not include email or other forms of electronic correspondence 
(collectively ``email''). To obtain additional production of email, 
absent an agreement between the parties to produce, the parties must 
propound specific email production requests, which requests require 
prior Board authorization.
    7. Email production requests, where authorized by the Board or 
permitted by agreement of the parties, shall be propounded for 
specific issues only, rather than general discovery of a party's 
products or business.
    8. Email production requests, where authorized by the Board or 
permitted by agreement of the parties, shall be phased to occur 
after a party's initial production under Sec.  42.51(b)(1).
    9. Where email production requests are authorized by the Board 
or permitted by agreement of the parties, such requests shall 
identify the custodian, search terms, and time frame. The parties 
shall cooperate to identify proper custodians, proper search terms, 
and proper time frame.
    10. Each requesting party shall limit its email production 
requests to a total of five custodians per producing party for all 
such requests. The parties may jointly agree to modify this limit 
without the Board's leave. The Board shall consider contested 
requests for up to five additional custodians per producing party, 
upon showing a need based on the size, complexity, and issues of 
this specific proceeding.
    11. Each party shall limit its email production requests to a 
total of five search terms per custodian per party. The parties may 
jointly agree to modify this limit without the Board's leave. The 
Board shall consider contested requests for up to five additional 
search terms per custodian, upon showing a need based upon the size, 
complexity, and issues of this specific proceeding. The search terms 
shall be narrowly tailored to particular issues. Indiscriminate 
terms, such as producing company's name or its product name, are 
inappropriate unless combined with narrowing search criteria that 
sufficiently reduce the risk of overproduction. A conjunctive 
combination of multiple words or phrases (e.g., ``computer'' and 
``system'') narrows the search and shall count as a single search 
term. A disjunctive combination of multiple words or phrases (e.g., 
``computer'' or ``system'') broadens the search, and thus each word 
or phrase shall count as a separate search term unless they are 
variants of the same word. Use of narrowing search criteria (e.g., 
``and,'' ``but not,'' ``w/x'') is encouraged to limit the 
production, and shall be considered when determining whether to 
shift costs for disproportionate discovery.
    12. The receiving party shall not use ESI that the producing 
party asserts is attorney-client privileged or work product 
protected to challenge the privilege or protection.
    13. Pursuant to Federal Rule of Evidence 502(b), the inadvertent 
production of an attorney-client privileged or work product 
protected ESI is not a waiver of such protection providing the 
holder of the privilege or protection took reasonable steps to 
prevent disclosure and the discloser promptly took reasonable steps 
to rectify the error.
    14. Similar to Federal Rule of Evidence 502(d), the mere 
production of ESI in the proceeding as part of a mass production 
shall not itself constitute a waiver of privilege for any purpose 
before the Office.

APPENDIX D: Testimony Guidelines

Introduction

    In trials before the Board, uncompelled direct testimony is 
almost always presented by affidavit or declaration. Sec.  42.53(a). 
All other testimony (including cross-examination, redirect 
examination, and compelled direct testimony) occurs by oral 
examination.
    Consistent with the policy expressed in Rule 1 of the Federal 
Rules of Civil Procedure, and corresponding Sec.  42.1(b), 
unnecessary objections, ``speaking'' objections, and coaching of 
witnesses in proceedings before the Board are strictly prohibited. 
Cross-examination testimony should be a question and answer 
conversation between the examining lawyer and the witness. The 
defending lawyer must not act as an intermediary, interpreting 
questions, deciding which questions the witness should answer, and 
helping the witness formulate answers while testifying.
    The testimony guidelines that follow are based on those set 
forth in the Federal Rules of Civil Procedure, supplemented by the 
practices followed in several federal district courts.

Examination and Cross-examination Outside the Presence of the Board

    1. The examination and cross-examination of a witness proceed as 
they would in a trial under the Federal Rules of Evidence, except 
that Rule 103 (Rulings on Evidence) does not apply. After putting 
the witness under oath or affirmation, the officer must record the 
testimony by audio, audiovisual, or stenographic means. Testimony 
must be recorded by the officer personally, or by a person acting in 
the presence and under direction of the officer.
    2. An objection at the time of the examination--whether to 
evidence, to a party's conduct, to the officer's qualifications, to 
the manner of taking the testimony, or any aspect of the testimony--
must be noted on the record, but the examination still proceeds; 
testimony is taken subject to any such objection.
    3. An objection must be stated concisely in a non-argumentative 
and non-suggestive manner. Counsel must not make objections or 
statements that suggest an answer to a witness. Objections should be 
limited to a single word or term. Examples of objections that would 
be properly stated are: ``Objection, form''; ``Objection, hearsay''; 
``Objection, relevance''; and ``Objection, foundation.'' Examples of 
objections that would not be proper are: ``Objection, I don't 
understand the question''; ``Objection, vague''; ``Objection, take 
your time answering the question''; and ``Objection, look at the 
document before you answer.'' An objecting party must give a clear 
and concise explanation of an objection if requested by the party 
taking the testimony or the objection is waived.
    4. Counsel may instruct a witness not to answer only when 
necessary to preserve a privilege, to enforce a limitation ordered 
by the Board, or to present a motion to terminate or limit the 
testimony.
    5. Unless otherwise agreed by the parties or ordered by the 
Board, the testimony is limited in duration to the times set forth 
in Sec.  42.53(c). The Board may allow additional time if needed to 
examine the witness fairly or if the witness, another person, or any 
other circumstance impedes or delays the examination.
    6. Once the cross-examination of a witness has commenced, and 
until cross-examination of the witness has concluded, counsel 
offering the witness on direct examination shall not: (a) Consult or 
confer with the witness regarding the substance of the witness' 
testimony already given, or anticipated to be given, except for the 
purpose of conferring on whether to assert a privilege against 
testifying or on how to comply with a Board order; or (b) suggest to 
the witness the manner in which any questions should be answered.
    7. An attorney for a witness shall not initiate a private 
conference with the witness or call for a break in the proceedings 
while a question is pending, except for the purpose of determining 
whether a privilege should be asserted.
    8. The Board may impose an appropriate sanction--including the 
reasonable expenses and attorneys' fees incurred by any party--on a 
person who impedes, delays, or frustrates the fair examination of 
the witness.
    9. At any time during the testimony, the witness or a party may 
move to terminate or limit the testimony on the ground that it is 
being conducted in bad faith or in a manner that unreasonably 
annoys, embarrasses, or oppresses the witness or party. The witness 
or party must promptly initiate a conference call with the Board to 
discuss the proposed motion. Sec.  42.20(b). If the objecting 
witness or party so demands, the testimony must be

[[Page 48773]]

suspended for the time necessary to obtain a ruling from the Board, 
except as the Board may otherwise order.

    Dated: July 16, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-17908 Filed 8-13-12; 8:45 am]
BILLING CODE 3510-16-P