[Federal Register Volume 80, Number 96 (Tuesday, May 19, 2015)]
[Rules and Regulations]
[Pages 28561-28566]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-12117]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2015-0032]
RIN 0651-AD00
Amendments to the Rules of Practice for Trials Before the Patent
Trial and Appeal Board
AGENCY: Patent Trial and Appeal Board, United States Patent and
Trademark Office, U.S. Department of Commerce.
ACTION: Final rule.
-----------------------------------------------------------------------
SUMMARY: This final rule amends the existing consolidated set of rules
relating to the United States Patent and Trademark Office (Office or
USPTO) trial practice for inter partes review, post-grant review, the
transitional program for covered business method patents, and
derivation proceedings that implemented provisions of the Leahy-Smith
America Invents Act (``AIA'') providing for trials before the Office.
DATES: Effective Date: This rule is effective May 19, 2015.
FOR FURTHER INFORMATION CONTACT: Susan L. C. Mitchell, Lead
Administrative Patent Judge by telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: This final rule
increases the page limitations for briefing for Patent Owner's motion
to amend and for Petitioner's reply brief in response to comments from
the public. This final rule also addresses clarifying changes to the
rules so that they conform to Office practice in conducting AIA
proceedings.
Summary of Major Provisions: In an effort to gauge the
effectiveness of the rules governing AIA trials, the Office conducted a
nationwide listening tour in April and May of 2014, and in June 2014,
published a Federal Register Notice asking for public feedback about
the AIA trial proceedings. The Office has carefully reviewed the
comments and, in response to public input, will issue two rules
packages; a first, final rule package with more ministerial changes to
the rules, and a second, proposed rule package that will issue later to
address more involved changes to the rules and the Office Patent Trial
Practice Guide. The Office presents the following final rules to
address issues concerning Patent Owner's motion to amend and
Petitioner's reply brief that involve ministerial changes, and will
address public comments relating to those specific issues only, in this
first, final rule package. For instance, the following final rules
provide ten additional pages for a Patent Owner motion to amend, allow
a claims appendix for a motion to amend, and provide ten additional
pages for Petitioner's reply brief.
These final rules also provide changes to conform the rules to the
Office's established practices in handling AIA proceedings. For
instance, the final rules require a specific font to ensure readability
of briefs, clarify that more than one back-up counsel can be named, and
clarify how to count challenged claims to calculate fees. The final
rules also clarify that providing a statement of material fact by a
party is optional and that routine discovery contemplates only cross-
examination of affidavit testimony prepared for the proceeding. The
final rules further provide that uncompelled direct testimony must be
in the form of an affidavit, not a deposition; that motions in limine
are not used in AIA practice; that objections to evidence should be
made part of the record by filing them; and that only a single request
for rehearing may be filed as of right. Finally, with regard to covered
business method patent reviews, the final rules clarify, consistent
with the AIA, that such reviews may be extended in the case of joinder
and that no petition for a covered business method patent review may be
filed if the petitioner or real party-in-interest filed a civil action
challenging the validity of a claim of the covered business method
patent.
Costs and Benefits: This rulemaking is not economically
significant, and is not significant, under Executive Order 12866 (Sept.
30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and
Executive Order 13422 (Jan. 18, 2007).
Background
Development of the Final Rule
On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)), and shortly thereafter in 2012, the Office
implemented rules to govern Office trial practice for AIA proceedings,
including inter partes review, post-grant review, the transitional
program for covered business method patents, and derivation proceedings
pursuant to 35 U.S.C. 135, 316 and 326 and AIA 18(d)(2). 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
48,612 (Aug. 14, 2012); Changes to Implement Inter Partes Review
Proceedings, Post-Grant Review Proceedings, and Transitional Program
for Covered Business Method Patents, 77 FR 48,680 (Aug. 14, 2012);
Transitional Program for Covered Business Method Patents--Definitions
of Covered Business Method Patent and Technological Invention, 77 FR
48,734 (Aug. 14, 2014). Additionally, the Office published a Patent
Trial Practice Guide for the 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. See Office Patent Trial
Practice Guide, 77 FR 48,756 (Aug. 14, 2012).
In an effort to gauge the effectiveness of the rules governing AIA
trials, the Office conducted a nationwide listening tour in April and
May of 2014. During the listening tour, the Office focused particularly
on transparency and public involvement in making trial proceedings more
effective going forward by adjusting the rules and guidance where
necessary. As a result, in June of 2014, the Office published a Request
for Comments in the Federal Register and, at stakeholder request,
extended the period for receiving comments to October 16, 2014. See
Request for Comments on Trial Proceedings Under
[[Page 28562]]
the America Invents Act Before the Patent Trial and Appeal Board, 79 FR
36,474 (June 27, 2014).
The Request for Comments asked seventeen questions on ten broad
topics, including a general catchall question, to elicit any proposed
changes to the AIA post-grant program that stakeholders suggest would
be beneficial. See Request for Comments, 79 FR at 36,476-77. The Office
received thirty-seven comments from bar associations, corporations, law
firms, and individuals, encompassing a wide range of issues. The Office
expresses its gratitude for the thoughtful and comprehensive comments
provided by the public, which are available on the USPTO Web site:
http://www.uspto.gov/page/comments-trial-proceedings-under-america-invents-act-patent-trial-and-appeal-board.
Several commenters expressed satisfaction with the current AIA
post-grant programs, and several commenters offered suggestions on how
to strengthen the AIA post-grant programs. For example, some
suggestions concerned the claim construction standard used by the PTAB,
motions to amend, discovery procedures, and handling of multiple
proceedings. The Office will address all public comments that do not
involve changes to the page limitations for Patent Owner's motion to
amend or Petitioner's reply brief in the second, proposed rule package.
Discussion of Specific Final Rules
Subpart A--Trial Practice and Procedure
Patent Owner's Motion To Amend
a. Amendments to the Rules
In response to comments received from the public concerning
amendment practice in AIA proceedings, the Office is increasing the
page limitation for Patent Owner's motion to amend by ten pages and
allowing a claims appendix that is not included in the page limitation.
To implement this increase in the page limitation for a motion to amend
from fifteen to twenty-five pages, exclusive of any claims appendix,
with a commensurate increase in the number of pages for an opposition
to a motion to amend, the Office amends 37 CFR 42.24(a) and (c),
42.121(b), and 42.221(b) as follows:
Amend 37 CFR 42.24(a)(1) to add the phrase ``or claim
listing'' after ``or appendix of exhibits.''
Amend 37 CFR 42.24(a)(1)(v) to read ``Motions (excluding
Motions to Amend): 15 pages''; and add (vi) to read ``Motions to Amend:
25 pages.''
Amend 37 CFR 42.24(c)(2) to read ``Replies to oppositions
(excluding replies to oppositions to Motions to Amend): 5 pages''; and
add (3) to read ``Replies to oppositions to Motions to Amend: 12
pages.''
Amend 37 CFR 42.121(b) to read ``Content. A motion to
amend claims must include a claim listing, which claim listing may be
contained in an appendix to the motion, show the changes clearly, and
set forth . . . .''
Amend 37 CFR 42.221(b) to read ``Content. A motion to
amend claims must include a claim listing, which claim listing may be
contained in an appendix to the motion, show the changes clearly, and
set forth . . . .''
b. Response to Comments
Comments: Although some comments advocated no change to the
Office's motion to amend practice in AIA proceedings, numerous comments
suggested relaxing the page limitation on Patent Owner's motion to
amend. Several comments proposed a specific number of additional pages,
and/or permitting the listing of claims in an appendix not counted
toward the page limit. One comment suggested a flexible page limit
based on the number of substitute claims proposed, and one comment
suggested that the Board more freely grant requests for additional
pages. Another comment suggested permitting the patent owner to
allocate unutilized pages from the patent owner's response to the
motion to amend.
Response: The overall request to relax the page limitation on
Patent Owner's motion to amend is adopted. As set forth above, the
Office amends 37 CFR 42.24(a) to increase the page limit for motions to
amend from 15 pages to 25 pages. Applying the provision of 37 CFR
42.24(b)(3) mandating an equal page limitation for oppositions, the
page limit for oppositions to motions to amend also increases from 15
pages to 25 pages. The Office also amends 37 CFR 42.24(c) to increase
the page limit for replies to oppositions to motions to amend from 5
pages to 12 pages. Also, the Office amends 37 CFR 42.121(b) and 37 CFR
42.221(b) to permit an appendix for the claim listing accompanying a
motion to amend that is not counted toward the 25-page limitation.
The specific request for a flexible page limit based on the number
of substitute claims is not adopted. This procedure is not warranted in
light of the above amendments relaxing the page limitation on Patent
Owner's motion to amend. In addition, this approach may encourage
parties to increase unnecessarily the number of substitute claims
presented solely to procure additional pages for the motion. In accord
with the specific request that the Board more freely grant requests for
additional pages, however, the Board will continue to consider requests
for additional pages on a case-by-case basis.
The specific request that a patent owner be able to allocate pages
from the patent owner's response to a motion to amend is not adopted.
This procedure is not warranted in light of the above amendments
relaxing the page limitation on Patent Owner's motion to amend. In
addition, this procedure would be difficult to administer in light of
the above amendments, placing an undue administrative burden on the
Office to determine and monitor the total number of pages allocated to
the patent owner, to the petitioner's opposition to the motion to
amend, and to any reply.
Petitioner's Reply
a. Amendments to the Rules
In response to comments received from the public, the Office is
increasing the page limitation for Petitioner's reply brief to Patent
Owner's response to petition by 10 pages. To implement this increase in
the page limitation for Petitioner's reply brief from fifteen to
twenty-five pages, the Office amends 37 CFR 42.24(c)(1) to read:
``Replies to patent owner responses to petitions: 25 pages.''
b. Response to Comments
Comments: Although at least one commenter wanted no change, several
commenters suggested that the fifteen pages afforded for a Petitioner's
reply brief is not commensurate with the number of pages afforded to
Patent Owner, especially if Patent Owner raises new issues. Commenters
suggested that increasing the page limitation for Petitioner's reply
brief would allow a more complete record before the Office. One comment
suggested that to provide Petitioner with a fair opportunity to
respond, the number of pages afforded for Petitioner's reply brief may
correspond to the number of pages in Patent Owner's post-institution
response that is devoted to new issues.
Response: The overall request to relax page limitations on
Petitioner's reply brief to Patent Owner's response is adopted. As set
forth above, the Office amends 37 CFR 42.24(c)(1) to increase the page
limit for Petitioner's reply brief from 15 to 25 pages.
The specific request for a flexible page limit based on new issues
raised in Patent Owner's response is not adopted. This procedure is not
warranted in light of the above amendment relaxing the page limitation
on Petitioner's reply
[[Page 28563]]
brief. In addition, this procedure would be difficult to administer,
placing an undue administrative burden on the Office to determine the
total number of pages allocated by Patent Owner to new issues.
Required Font
In AIA post-grant proceeding filings, the Office has required
either a proportional or monospaced font that is 14-point or larger,
with an additional requirement that any monospaced font must not
contain more than four characters per centimeter or ten characters per
inch. See 37 CFR 42.6(a)(2)(ii). The Office has received briefs from
parties that utilize narrow fonts that may be compliant with these
requirements, but nevertheless, have proved difficult to read. To
address this concern, the Office is amending 37 CFR 42.6(a)(2) to
require 14-point, Times New Roman proportional font, with normal
spacing, to ensure readability of all briefs.
Counsel
To clarify the rule regarding designation of counsel for an AIA
proceeding that more than one back-up counsel may be designated, the
Office amends 37 CFR 42.10 as follows:
Replace the article ``a'' before ``back-up counsel'' with
``at least one'' in 37 CFR 42.10(a).
Fees
The Office has explained in the Office Patent Trial Practice Guide
that to understand the scope of a dependent claim, the claim(s) from
which the dependent claim depends must be construed along with the
dependent claim. Therefore, to calculate any fee due under 37 CFR 42.15
that is based on the number of claims, each claim challenged will be
counted as well as any claim from which a challenged claim depends,
unless the parent claim is also separately challenged. See Rules of
Practice for Trials Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule,
77 FR 48,612, 48,619 (Aug. 14, 2012).
To clarify the fees rule to reflect explicitly this requirement to
include unchallenged claims from which a challenged claim depends in
the claim count for fee calculating purposes, the Office is amending 37
CFR 42.15 as follows:
Add the content ``, including unchallenged claims from
which a challenged claim depends'' after the text ``each claim in
excess of 20'' in 37 CFR 42.15(a)(3) and 42.15(b)(3).
Delete the first instance of the phrase ``request fee'' in
the following phrase ``Post-Grant or Covered Business Method Patent
Review request fee Post-Institution request fee'' in 42.15(b)(4).
Add the content ``, including unchallenged claims from
which a challenged claim depends'' after the text ``each claim in
excess of 15'' in 37 CFR 42.15(a)(4) and 42.15(b)(4).
Oppositions and Replies and Page Limits for Petitions, Motions,
Oppositions, and Replies
To clarify that supplying a statement of material fact by a party
is optional, the Office amends 37 CFR 42.23 and 42.24 as follows:
Replace the phrase ``and must include a statement
identifying material facts in dispute'' from the first sentence of 37
CFR 42.23(a) with ``and, if the paper to which the opposition or reply
is responding contains a statement of material fact, must include a
listing of facts that are admitted, denied, or cannot be admitted or
denied.''
Replace the phrase ``the required'' with ``any'' in the
first sentence of 37 CFR 42.24(c).
Discovery
To clarify that routine discovery includes only the cross-
examination of affidavit testimony prepared for the proceeding, the
Office amends 37 CFR 42.51(b)(1)(ii) to add the phrase ``prepared for
the proceeding'' after ``affidavit testimony.''
Taking Testimony
Because uncompelled direct testimony must be submitted in the form
of an affidavit, the Office is amending 37 CFR 42.53(c)(2) as follows:
Delete the word ``deposition'' from the phrase
``uncompelled direct deposition testimony.''
To clarify that either party is permitted to file testimony as an
exhibit, the Office amends 37 CFR 42.53(f)(7) to delete the phrase ``by
proponent'' in the second sentence.
Motion in Limine
The term motion in limine is included in the title for 37 CFR
42.64, but the rule does not provide for a motion in limine. To clarify
the rule, the Office amends 37 CFR 42.64 to delete ``motion in limine''
from the title of the rule.
Objection
The Office amends 37 CFR 42.64(b)(1) for consistency with the
Office Patent Trial Practice Guide. The Office Patent Trial Practice
Guide requires that a party wishing to challenge admissibility of
evidence must object timely to the evidence. Therefore, the Office
Patent Trial Practice Guide states that a motion to exclude evidence
requires a party to identify where in the record the objection
originally was made, but 37 CFR 42.64(b)(1) merely requires service of
objections to evidence, which does not make such objections part of the
record. Therefore, the Office amends the first and second sentences of
37 CFR 42.64(b)(1) to replace ``served'' with ``filed'' so as to
require filing of objections, which also requires service under 37 CFR
42.6(e)(2).
Decision on Petition or Motions
To clarify that a party may file only a single request for
rehearing as of right, the Office amends 37 CFR 42.71(d) to add
``single'' before ``request for rehearing'' in the first sentence.
Subpart D--Transitional Program for Covered Business Method Patents
Procedure and Pendency
To clarify that the pendency of a covered business method patent
review proceeding can be extended in the case of joinder and to
harmonize the rule with similar rules in other post grant proceedings,
the Office amends 37 CFR 42.300(c) to add ``, or adjusted by the Board
in the case of joinder'' at the end of the second sentence after
``Chief Administrative Patent Judge.''
Who May Petition for a Covered Business Method Patent Review
The Office may not institute a covered business method patent
review of a challenged patent when the petitioner filed a civil action
challenging the validity of a claim of the patent before filing the
petition. See AIA section 18(a)(1); 35 U.S.C. 325(a)(1); SecureBuy, LLC
v. CardinalCommerce Corp., Case CBM2014-00035 (PTAB Apr. 25, 2014)
(Paper 12) (precedential). To state this prohibition explicitly, the
Office amends 37 CFR 42.302 to add a section (c) as set forth in the
regulatory text of this rule.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This final rule revises the
consolidated set of rules relating to Office trial practice for inter
partes review, post-grant review, the transitional program for covered
business method patents, and derivation proceedings. The changes being
adopted in this rule do not change the substantive criteria of
patentability. These changes involve rules of agency practice. See,
e.g., 35 U.S.C. 316(a)(5), as amended. http://www.cruiseamerica_.com/rent/our_vehicles/ These rules are procedural
[[Page 28564]]
and/or interpretive rules. See Bachow Commc'ns Inc. v. F.C.C., 237 F.3d
683, 690 (D.C. Cir. 2001) (rules governing an application process are
procedural under the Administrative Procedure Act); Inova Alexandria
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling
appeals were procedural where they did not change the substantive
requirements for reviewing claims); Nat'l Org. of Veterans' Advocates
v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001)
(rule that clarifies interpretation of a statute is interpretive); JEM
Broad. Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (rules are not
legislative because they do not ``foreclose effective opportunity to
make one's case on the merits'').
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), do not require notice and comment rulemaking for
``interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice'') (quoting 5 U.S.C.
553(b)(A)); U.S. v. Gould, 568 F.3d 459, 476 (4th Cir. 2009) (``The APA
also requires publication of any substantive rule at least 30 days
before its effective date, 5 U.S.C. 553(d), except where the rule is
interpretive . . . .'').
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601-612)
is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
final rule are not expected to result in an annual effect on the
economy of 100 million dollars or more, a major increase in costs or
prices, or significant adverse effects on competition, employment,
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic
and export markets. Therefore, this final rule is not a ``major rule''
as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This final rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
This rulemaking does not add any additional information requirements or
fees for parties before the Board. Therefore, the Office is not
resubmitting information collection packages to OMB for its review and
approval because the revisions in this rulemaking do not materially
change the
[[Page 28565]]
information collections approved under OMB control number 0651-0069.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to, a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, inventions and patents.
For the reasons set forth in the preamble, 37 CFR part 42 is
amended as follows.
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326 and Public Law 112-29.
Subpart A--Trial Practice and Procedure
0
2. Section 42.6 is amended by revising paragraph (a)(2)(ii) to read as
follows:
Sec. 42.6 Filing of documents, including exhibits; service.
(a) * * *
(2) * * *
(ii) 14-point, Times New Roman proportional font, with normal
spacing, must be used;
* * * * *
0
3. Section 42.10 is amended by revising paragraph (a) to read as
follows:
Sec. 42.10 Counsel.
(a) If a party is represented by counsel, the party must designate
a lead counsel and at least one back-up counsel who can conduct
business on behalf of the lead counsel.
* * * * *
0
4. Section 42.15 is amended by revising paragraphs (a)(3), (a)(4),
(b)(3), and (b)(4) to read as follows:
Sec. 42.15 Fees.
(a) * * *
(3) In addition to the Inter Partes Review request fee, for
requesting review of each claim in excess of 20, including unchallenged
claims from which a challenged claim depends: $200.00.
(4) In addition to the Inter Partes Post-Institution request fee,
for requesting review of each claim in excess of 15, including
unchallenged claims from which a challenged claim depends: $400.00.
(b) * * *
(3) In addition to the Post-Grant or Covered Business Method Patent
Review request fee, for requesting review of each claim in excess of
20, including unchallenged claims from which a challenged claim
depends: $250.00.
(4) In addition to the Post-Grant or Covered Business Method Patent
Review Post-Institution request fee, for requesting review of each
claim in excess of 15, including unchallenged claims from which a
challenged claim depends: $550.00.
* * * * *
0
5. Section 42.23 is amended by revising the first sentence of paragraph
(a) to read as follows:
Sec. 42.23 Oppositions and replies.
(a) Oppositions and replies must comply with the content
requirements for motions and, if the paper to which the opposition or
reply is responding contains a statement of material fact, must include
a listing of facts that are admitted, denied, or cannot be admitted or
denied. * * *
* * * * *
0
6. Section 42.24 is amended by revising paragraphs (a)(1) introductory
text and (a)(1)(v), the first sentence of paragraph (c) introductory
text, and paragraphs (c)(1) and (c)(2), and adding paragraphs
(a)(1)(vi) and (c)(3) to read as follows:
Sec. 42.24 Page limits for petitions, motions, oppositions, and
replies.
(a) Petitions and motions.
(1) The following page limits for petitions and motions apply and
include any statement of material facts to be admitted or denied in
support of the petition or motion. The page limit does not include a
table of contents, a table of authorities, a certificate of service, or
appendix of exhibits or claim listing.
* * * * *
(v) Motions (excluding Motions to Amend): 15 pages.
(vi) Motions to Amend: 25 pages.
* * * * *
(c) Replies. The following page limits for replies apply and
include any statement of facts in support of the reply. * * *
(1) Replies to patent owner responses to petitions: 25 pages.
(2) Replies to oppositions (excluding replies to oppositions to
Motions to Amend): 5 pages.
(3) Replies to oppositions to Motions to Amend: 12 pages.
0
7. Section 42.51 is amended by revising paragraph (b)(1)(ii) to read as
follows.
Sec. 42.51 Discovery.
* * * * *
(b) * * *
(1) * * *
(ii) Cross examination of affidavit testimony prepared for the
proceeding is authorized within such time period as the Board may set.
* * * * *
0
8. Section 42.53 is amended by revising paragraphs (c)(2) and (f)(7) to
read as follows:
Sec. 42.53 Taking testimony.
* * * * *
(c) * * *
(2) Unless stipulated by the parties or ordered by the Board,
cross-examination, redirect examination, and re-cross examination for
uncompelled direct testimony shall be subject to the follow time
limits: Seven hours for cross-examination, four hours for redirect
examination, and two hours for re-cross examination.
* * * * *
(f) * * *
(7) Except where the parties agree otherwise, the proponent of the
testimony must arrange for providing a copy of the transcript to all
other parties. The testimony must be filed as an exhibit.
* * * * *
0
9. Section 42.64 is amended by revising the section heading and the
first two sentences of paragraph (b)(1) to read as follows.
Sec. 42.64 Objection; motion to exclude.
* * * * *
(b) * * *
(1) Objection. Any objection to evidence submitted during a
preliminary proceeding must be filed within ten business days of the
institution of the trial. Once a trial has been instituted, any
objection must be filed within five business days of service of
evidence to which the objection is directed. * * *
* * * * *
0
10. Section 42.71 is amended by revising the first sentence of
paragraph (d) to read as follows:
Sec. 42.71 Decisions on petitions or motions.
* * * * *
(d) Rehearing. A party dissatisfied with a decision may file a
single request for rehearing without prior authorization from the
Board. * * *
* * * * *
[[Page 28566]]
Subpart B--Inter Partes Review
0
11. Section 42.121 is amended by revising paragraph (b) introductory
text to read as follows:
Sec. 42.121 Amendment of the patent.
* * * * *
(b) Content. A motion to amend claims must include a claim listing,
which claim listing may be contained in an appendix to the motion, show
the changes clearly, and set forth:
* * * * *
Subpart C--Post-Grant Review
0
12. Section 42.221 is amended by revising paragraph (b) introductory
text to read as follows:
Sec. 42.221 Amendment of the patent.
* * * * *
(b) Content. A motion to amend claims must include a claim listing,
which claim listing may be contained in an appendix to the motion, show
the changes clearly, and set forth:
* * * * *
Subpart D--Transitional Program for Covered Business Method Patents
0
13. Section 42.300 is amended by revising paragraph (c) to read as
follows:
Sec. 42.300 Procedure; pendency.
* * * * *
(c) A covered business method patent review proceeding shall be
administered such that pendency before the Board after institution is
normally no more than one year. The time can be extended by up to six
months for good cause by the Chief Administrative Patent Judge, or
adjusted by the Board in the case of joinder.
* * * * *
0
14. Section 42.302 is amended by adding paragraph (c) to read as
follows:
Sec. 42.302 Who may petition for a covered business method patent
review.
* * * * *
(c) A petitioner may not file a petition to institute a covered
business method patent review of the patent where, before the date on
which the petition is filed, the petitioner or real party-in-interest
filed a civil action challenging the validity of a claim of the patent.
Dated: May 14, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2015-12117 Filed 5-18-15; 8:45 am]
BILLING CODE 3510-16-P