[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]


-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

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),

[[Page 36475]]

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

[[Page 36476]]

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?

[[Page 36477]]

    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]
BILLING CODE 3510-16-P