[Federal Register Volume 79, Number 124 (Friday, June 27, 2014)]
[Notices]
[Pages 36474-36477]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-15171]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2014-0031]
Request for Comments on Trial Proceedings Under the America
Invents Act Before the Patent Trial and Appeal Board
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The Leahy-Smith America Invents Act (AIA) provided for new
administrative trial proceedings before the Patent Trial and Appeal
Board (Board). The United States Patent and Trademark Office (USPTO)
issued a number of final rules and a trial practice guide in August and
September of 2012 to implement the new administrative trial provisions
of the AIA. The USPTO now is seeking public comment on all aspects of
the new administrative trial proceedings, including the administrative
trial proceeding rules and trial practice guide.
DATES: Comment Deadline Date: Written comments must be received on or
before September 16, 2014.
ADDRESSES: Comments must be sent by electronic mail message over the
Internet addressed to: [email protected].
Electronic comments submitted in plain text are preferred, but also
may be submitted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital
scanning into ADOBE[supreg] portable document format. The comments will
be available for viewing via the USPTO's Internet Web site (http://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Scott R. Boalick, Vice Chief
Administrative Patent Judge (Acting),
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Patent Trial and Appeal Board, at 571-272-8138.
SUPPLEMENTARY INFORMATION: Sections 3, 6, and 18 of the AIA provided
for the following new Board administrative trial proceedings: (1) Inter
partes review; (2) post-grant review; (3) covered business method
patents review; and (4) derivation proceedings. Public Law 112-29, 125
Stat. 284 (2011). The USPTO issued a number of final rules and a trial
practice guide in August and September of 2012 to implement the new
administrative trial provisions of the AIA. See Rules of Practice for
Trials Before the Patent Trial and Appeal Board and Judicial Review of
Patent Trial and Appeal Board Decisions, 77 FR 48612 (Aug. 14, 2012)
(final rule); Changes to Implement Inter Partes Review Proceedings,
Post-Grant Review Proceedings, and Transitional Program for Covered
Business Method Patents, 77 FR 48680 (Aug. 14, 2012) (final rule);
Transitional Program for Covered Business Method Patents--Definitions
of Covered Business Method Patent and Technological Invention, 77 FR
48734 (Aug. 14, 2012) (final rule); Changes to Implement Derivation
Proceedings, 77 FR 56068 (Sept. 11, 2012) (final rule); and Office
Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012).
During the rulemaking to implement the administrative trial
provisions of the AIA, the USPTO held AIA roadshows in eighteen cities
to engage with the public. In issuing the administrative trial
proceeding rules and trial practice guide, the USPTO committed to
revisiting the rules and practice guide once the Board and public had
operated under the rules and practice guide for some period and had
gained experience with the new administrative trial proceedings. The
Board and public now have eighteen months of experience with the new
administrative trial proceedings, and, therefore, the USPTO has
determined that it is time to seek public input on the AIA
administrative trial proceeding rules and trial practice guide in light
of this experience.
The USPTO began the process of revisiting the AIA administrative
trial proceeding rules and trial practice guide by engaging in a
nation-wide listening tour. The USPTO conducted a series of eight
roundtables in April and May of 2014, held in Alexandria, New York
City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to
share information concerning the AIA administrative trial proceedings
with the public and obtain public feedback on these proceedings. At
these roundtables, the Board provided the public with statistics
concerning the administrative trial proceedings, as well as lessons
learned for filing effective petitions and preliminary patent owner
statements, engaging in successful discovery and amendment practice,
and effectively presenting a case at oral hearing. The Board also
received feedback from the public on the AIA administrative trial
proceeding rules and trial practice guide, as well as on experiences in
general with the AIA administrative trial proceedings. More information
about the roundtables is available at http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp.
More specifically, during the AIA roundtables, the USPTO received
some comments of a non-rule specific nature. The Board does not
anticipate these comments necessitating any changes to the current AIA
trial proceeding rules, as discussed below.
At least one participant at the AIA roundtables commented that the
Board's Scheduling Order should require parties to an AIA trial to
engage in a settlement discussion. The current AIA trial proceeding
rules do not dictate the contents of scheduling orders in AIA trials.
Rather, Appendix A of the Office Patent Trial Practice Guide (``trial
practice guide'') provides sample scheduling orders. Further, the trial
practice guide states, ``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.'' Trial
practice guide, section N. Generally, the Board strongly encourages the
parties to engage in settlement discussions. Should the Board move
forward with changes to the AIA trial proceeding rules, the Board will
consider whether to amend Appendix A of the trial practice guide to
provide an example order in which the parties are required to engage in
a settlement discussion by a specified date. The exact content of any
scheduling order will remain within the discretion of the judge(s)
issuing the order.
At least one participant at the AIA roundtables commented that a
notice of appeal from a Board decision rendered in an AIA trial should
be required to be served on the Solicitor. The USPTO has experienced
problems in the past with parties who seek an appeal from a Board
decision in an AIA trial failing to comply with the notice and service
requirements of 37 CFR 90.2. Section 90.2 requires, in pertinent part,
``In all appeals, the notice of appeal required by 35 U.S.C. 142 must
be filed with the Director of the United States Patent and Trademark
Office as provided in Sec. 104.2 of this title,'' and that the notice
must include a description of the issues expected to be pursued on
appeal. Section 104.2 provides that such notice should be sent to the
Office of the General Counsel, of which the Solicitor's Office is a
part. Thus, the current Office rules governing service of a notice of
appeal already provide for service on the Solicitor. Importantly,
notice to the Office of the General Counsel of an appeal taken from a
Board decision provides the Solicitor with an opportunity to intervene
in the appeal on behalf of the USPTO. Failure to notify the USPTO
properly of the filing of a notice of appeal may result in the
Solicitor belatedly seeking to intervene in the appeal once the USPTO
becomes aware of the appeal through other means. Due to past failures
of parties to comply with this rule, the Board typically adds a
reminder at the end of final, appealable Board decisions that the
parties must comply with the notice and service requirements of Sec.
90.2, should they seek judicial review of the decision.
At least one participant at the AIA roundtables commented that the
Board should not continue a trial if the parties settle the matter
because continuation of the trial is unfair to the parties. The statute
provides for settlement of inter partes review, post-grant review, and
covered business method patents review proceedings. 35 U.S.C. 317, 327,
and section 18(a)(1) of the AIA. The statute also provides that after
termination of such a proceeding with respect to a petitioner, if no
petitioner remains in the proceeding, ``the Office may terminate the
review or proceed to a final written decision.'' In keeping with the
statute, 37 CFR 42.74(a) provides that, while the parties may agree to
settle any issue in a proceeding, the Board is not a party to the
settlement and independently may determine any question of
jurisdiction, patentability, or Office practice. In issuing this final
rule, the USPTO responded to comments on this matter explaining that
the statutory language for inter partes and post-grant reviews confers
discretion to the Board to terminate or proceed to a final written
decision based on the facts in a particular review. 77 FR at 48469. The
determination by the Board to proceed to a final written decision is
made taking into account public policy considerations. In particular,
if the parties settle the matter late in the proceeding after the Board
has reached a determination of unpatentability as to
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one or more claims of the patent under review, the Board, in its
discretion, may determine that proceeding to a final written decision
is in the best interests of the public. Parties seeking to avoid having
a proceeding reach final written decision after settlement are
encouraged to settle the issues in the proceeding well in advance of
the oral hearing.
At least one participant at the AIA roundtables asked for the
USPTO's interpretation of the estoppel effect of a Board decision on
civil actions and other proceedings. See 35 U.S.C. 315(e)(2) and
325(e)(2). The scope or interpretation of the estoppel provisions of
the statute as they pertain to civil actions and other proceedings
outside the Office is not a matter for comment by the USPTO. Rather,
the federal courts are best positioned to interpret the statutory
estoppel language as it applies to civil actions and other proceedings
outside the USPTO in the context of the particular facts in a given
case.
At least one participant at the AIA roundtables commented that the
Board should issue more precedential and informative AIA trial
decisions to provide guidance for practitioners. The Board has posted
representative decisions from AIA trials on its Web page. The Board is
in the process of vetting additional AIA trial decisions for potential
designation as precedential and informative. Additional precedential
and informative AIA trial decisions will be posted to the Board's Web
page as these designations are made. The Board's Standard Operating
Procedure 2, which concerns publication of opinions and designation of
opinions as precedential, provides that an appellant, patentee,
petitioner, or a third party member of the public may, within 60 days
of issuance of an opinion, request in writing that an opinion be made
precedential by forwarding the request, along with accompanying
reasons, to the Chief Judge. SOP2, Sec. II.C. The Board encourages
members of the public to notify the Chief Judge if members of the
public deem an opinion rendered by the Board in an AIA trial suitable
for designation as precedential.
At least one participant at the AIA roundtables commented that the
Board should make audio files or transcripts of oral arguments in AIA
trials available to the public. The Board currently employs court
reporters at all AIA trial hearings to create a written transcript of
each hearing. These transcripts are made available to the public
through the Patent Review Processing System (PRPS), which is accessible
via the Board's Web page.
At least one participant at the AIA roundtables commented that the
Board should enhance PRPS to permit non-parties to register to receive
notices of decisions in a case. Another participant at the AIA
roundtables commented that the Board should enhance PRPS to provide for
better searchability of AIA trial decisions. The Board is currently in
the process of developing a new PTAB End-to-End information technology
system (``PTAB E2E'') that, once fully deployed, will provide
additional features to the public portion of the system. The Board will
bear in mind the input received at the AIA roundtables in developing
requirements for PTAB E2E. In the meantime, interim solutions are being
explored to make AIA trial decisions more easily accessible and
searchable on the PTAB Web page.
At least one participant at the AIA roundtables commented that the
Board should offer more statistics about AIA trial proceedings,
including showing the outcome of final written decisions by the
technology center that issued the patent and correlating the number of
preliminary patent owner responses with decisions to institute trial.
PRPS has certain limitations in its structure that do not allow for
easy extraction of data in an automated fashion. These limitations make
it particularly difficult and time consuming for the Board to present
statistics on AIA trials. Currently, the Board calculates AIA trial
statistics through manual data collection means. With the number of AIA
filings and the number of active AIA trials on the rise, the Board is
finding the collection of such data to be even more difficult and time
consuming. As requirements are developed for PTAB E2E, data extraction
and analysis will be kept in mind so that the next generation PTAB IT
system will allow provision of more statistical data about AIA trials.
In the meantime, the Board is working to enhance AIA trial statistics
published regularly on the Board's Web page.
As discussed previously, the USPTO is seeking public comment on all
aspects of the new administrative trial proceedings, including the
administrative trial proceeding rules and trial practice guide. The
following are issues on which the USPTO is especially interested in
receiving public comment, as these issues were most frequently raised
during the roundtables:
Claim Construction Standard
1. Under what circumstances, if any, should the Board decline to
construe a claim in an unexpired patent in accordance with its broadest
reasonable construction in light of the specification of the patent in
which it appears?
Motion To Amend
2. What modifications, if any, should be made to the Board's
practice regarding motions to amend?
Patent Owner Preliminary Response
3. Should new testimonial evidence be permitted in a Patent Owner
Preliminary Response? If new testimonial evidence is permitted, how can
the Board meet the statutory deadline to determine whether to institute
a proceeding while ensuring fair treatment of all parties?
Obviousness
4. Under what circumstances should the Board permit discovery of
evidence of non-obviousness held by the petitioner, for example,
evidence of commercial success for a product of the petitioner? What
limits should be placed on such discovery to ensure that the trial is
completed by the statutory deadline?
Real Party in Interest
5. Should a patent owner be able to raise a challenge regarding a
real party in interest at any time during a trial?
Additional Discovery
6. Are the factors enumerated in the Board's decision in Garmin v.
Cuozzo, IPR2012-00001, appropriate to consider in deciding whether to
grant a request for additional discovery? What additional factors, if
any, should be considered?
Multiple Proceedings
7. How should multiple proceedings before the USPTO involving the
same patent be coordinated? Multiple proceedings before the USPTO
include, for example: (i) Two or more separate AIA trials; (ii) an AIA
trial and a reexamination proceeding; or (iii) an AIA trial and a
reissue proceeding,
8. What factors should be considered in deciding whether to stay,
transfer, consolidate, or terminate an additional proceeding involving
the same patent after a petition for AIA trial has been filed?
9. Under what circumstances, if any, should a copending
reexamination proceeding or reissue proceeding be stayed in favor of an
AIA trial? If a stay is entered, under what circumstances should the
stay be lifted?
10. Under what circumstances, if any, should an AIA trial be stayed
in favor of a copending reexamination proceeding or reissue proceeding?
If a stay is entered, under what circumstances should the stay be
lifted?
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11. Under what circumstances, if any, should a copending
reexamination proceeding or reissue proceeding be consolidated with an
AIA trial?
12. How should consolidated proceedings be handled before the
USPTO? Consolidated proceedings include, for example: (i) Consolidated
AIA trials; (ii) an AIA trial consolidated with a reexamination
proceeding; or (iii) an AIA trial consolidated with a reissue
proceeding.
13. Under what circumstances, if any, should a petition for an AIA
trial be rejected because the same or substantially the same prior art
or arguments previously were presented to the USPTO in a different
petition for an AIA trial, in a reexamination proceeding or in a
reissue proceeding?
Extension of 1 Year Period To Issue Final Determination
14. What circumstances should constitute a finding of good cause to
extend the 1-year period for the Board to issue a final determination
in an AIA trial?
Oral Hearing
15. Under what circumstances, if any, should live testimony be
permitted at the oral hearing?
16. What changes, if any, should be made to the format of the oral
hearing?
General
17. What other changes can and should be made in AIA trial
proceedings? For example, should changes be made to the Board's
approach to instituting petitions, page limits, or request for
rehearing practice?
Dated: June 23, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and,
Deputy Director of the United States Patent and Trademark Office.
[FR Doc. 2014-15171 Filed 6-26-14; 8:45 am]
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