[Federal Register Volume 80, Number 161 (Thursday, August 20, 2015)]
[Proposed Rules]
[Pages 50720-50747]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-20227]



[[Page 50719]]

Vol. 80

Thursday,

No. 161

August 20, 2015

Part II





Department of Commerce





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





United States Patent and Trademark Office





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





37 CFR Part 42





 Amendments to the Rules of Practice for Trials Before the Patent Trial 
and Appeal Board; Proposed Rules

  Federal Register / Vol. 80 , No. 161 / Thursday, August 20, 2015 / 
Proposed Rules  

[[Page 50720]]


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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 42

[Docket No. PT0-P-2015-0053]
RIN 0651-AD01


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: Proposed rule.

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

SUMMARY: This proposed rule would amend the existing consolidated set 
of rules relating to the United States Patent and Trademark Office 
(Office or USPTO) trial practice for inter partes review (``IPR''), 
post-grant review (``PGR''), the transitional program for covered 
business method patents (``CBM''), and derivation proceedings that 
implemented provisions of the Leahy-Smith America Invents Act (``AIA'') 
providing for trials before the Office.

DATES: Comment date: The Office solicits comments from the public on 
this proposed rulemaking. Written comments must be received on or 
before October 19, 2015 to ensure consideration.
    Roadshow Dates: The Office, in concert with the American 
Intellectual Property Association (``AIPLA''), will have a Road Show 
Series in August 2015 where the proposed rules will be discussed. This 
AIPLA/USPTO Road Show Series, entitled ``Enhancing Patent Quality and 
Conducting AIA Trials,'' will be held on August 24, 2015 in Santa 
Clara, California, August 26, 2015 in Dallas, Texas, and August 28, 
2015 in Alexandria, Virginia.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by postal mail addressed to: Mail Stop Patent Board, Director 
of the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450, marked to the attention of ``Lead Judge 
Susan Mitchell, Patent Trial Proposed Rules.''
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal e-Rulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message to be able to 
more easily share all comments with the public. The Office prefers the 
comments to be submitted in plain text, but also accepts comments 
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 accommodates digital scanning into 
ADOBE[supreg] portable document format.
    The comments will be available for public inspection at the Patent 
Trial and Appeal Board, currently located in Madison East, Ninth Floor, 
600 Dulany Street, Alexandria, Virginia. Comments also will be 
available for viewing via the Office's Internet Web site http://www.uspto.gov/patents/law/comments/index.jsp. Because comments will be 
made available for public inspection, information that the submitter 
does not desire to be made public, such as address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Susan L. C. Mitchell, Lead 
Administrative Patent Judge by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: This proposed rule would amend 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.

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, 
already has issued a first, final rule, which was published on May 19, 
2015. That final rule addressed issues concerning the patent owner's 
motion to amend and the petitioner's reply brief that involved 
ministerial changes. For instance, the final rules provided ten 
additional pages for a patent owner's motion to amend, allowed a claims 
appendix for a motion to amend, and provided ten additional pages for a 
petitioner's reply brief, in addition to other ministerial changes to 
conform the rules to the Office's established practices in handling AIA 
proceedings.
    This second, proposed rule (the subject of this Federal Register 
document) addresses more involved proposed changes to the rules and 
proposed revisions to the Office Patent Trial Practice Guide. The 
Office presents the following proposed rules to address issues and 
public comments that were raised concerning the claim construction 
standard for AIA trials, new testimonial evidence submitted with a 
patent owner's preliminary response, Rule 11-type certification, and 
word count for major briefing. The Office will also later amend its 
Office Patent Trial Practice Guide to reflect developments in practice 
before the Office concerning how the Office handles additional 
discovery, live testimony, and confidential information. In response to 
the USPTO's roundtable on attorney-client privilege issues held in 
February 2015, the Office also requests input on recognizing privilege 
for communications between a patent applicant or owner and its U.S. 
patent agent or foreign patent practitioner in a possible future 
rulemaking.
    The Office anticipates that it will continue to refine the rules 
governing AIA trials to continue to ensure fairness and efficiency 
while meeting the congressional mandate. Therefore, the Office 
continues to encourage comments concerning how the rules may be refined 
to achieve this goal.
    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 These Proposed Rules

    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 trials, 
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 48612 
(Aug. 14, 2012); Changes to Implement Inter Partes Review Proceedings, 
Post-Grant Review Proceedings, and Transitional Program

[[Page 50721]]

for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012); 
Transitional Program for Covered Business Method Patents--Definitions 
of Covered Business Method Patent and Technological Invention, 77 FR 
48734 (Aug. 14, 2012). 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 48756 (Aug. 14, 2012).
    In an effort to gauge the effectiveness of these rules governing 
AIA trials, the Office conducted a nationwide listening tour in April 
and May of 2014. During the listening tour, the Office solicited 
feedback on how to make the trial proceedings more transparent and 
effective by adjusting the rules and guidance where necessary. To 
elicit even more input, 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 the America Invents Act 
Before the Patent Trial and Appeal Board, 79 FR 36474 (June 27, 2014).
    The Request for Comments asked seventeen questions on ten broad 
topics, including a general catchall question, to gather stakeholder 
feedback on any changes to the AIA trial proceedings that might be 
beneficial. See Request for Comments, 79 FR at 36476-77. 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 rules 
governing AIA trial proceedings, and several commenters offered 
suggestions on how to strengthen the AIA trial proceeding rules. 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 addressed all public comments that 
involved changes to the page limitations for a patent owner's motion to 
amend or a petitioner's reply brief in the first, final rulemaking. The 
Office will address the remaining comments in this second, proposed 
rulemaking.

Differences Between the Proposed Rules and the Current Rules

    The Office will address the differences between the proposed rules 
and the current rules in relation to the seventeen questions that the 
Office asked in the June 27, 2014 Notice concerning the following ten 
topics: (1) Claim construction standard; (2) a patent owner's motions 
to amend; (3) a patent owner's preliminary response; (4) additional 
discovery; (5) obviousness; (6) real party in interest; (7) multiple 
proceedings; (8) extension of one year period to issue a final 
determination; (9) oral hearing; and (10) general topics. See 79 FR at 
36476. The comments provided support for, opposition to, and diverse 
recommendations on the current rules. The Office appreciates the 
thoughtful comments, and has considered and analyzed the comments 
thoroughly. In this discussion, the Office will respond to the comments 
submitted in response to the seventeen questions (besides those which 
involved suggestions for page limitation changes for a patent owner's 
motion to amend or petitioner's reply brief) and set forth proposed 
changes to the rules and the Office Patent Trial Practice Guide. In 
addition, in order to further attempt to prevent any misuse of the AIA 
proceedings, the Office proposes to amend 37 CFR 42.11 (which 
prescribes the duty of candor owed to the Office in these proceedings) 
to include a Federal Rule of Civil Procedure Rule 11-type certification 
for all papers filed with the Board in these proceedings, including a 
provision for sanctions for misconduct in connection with such papers. 
If appropriate, such misconduct in the course of AIA proceedings might 
also be reported to the Office of Enrollment and Discipline.

Claim Construction Standard

    The Office asked, ``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?'' 79 FR at 36476. The Office 
received comments advocating various positions, including that it 
should continue to apply the broadest reasonable interpretation 
standard in construing terms of an unexpired patent, that it should use 
a Phillips-type construction standard for all patents at issue in AIA 
proceedings, and that it use the claim construction standard set forth 
in Phillips v. AWH Corp., 415 F.3d 130 (Fed. Cir. 2005 (en banc), under 
certain circumstances. The Office will address each of these 
suggestions in turn.
    Comment 1: Multiple commenters recommended that the Office continue 
to apply the broadest reasonable interpretation standard in construing 
terms of an unexpired patent at issue in an inter partes review 
proceeding, post-grant review proceeding, or covered business method 
review proceeding. These commenters stressed that ``the broadest 
reasonable construction standard used during traditional ex parte 
prosecution, reissue, and reexamination practice is a reasonable 
standard to use in PTAB proceedings.'' These same commenters noted that 
the ``PTO has a long-standing practice of giving patent claims their 
broadest reasonable interpretation during examination and during other 
post-issuance proceedings such as reexamination, reissue and 
interference for good reason,'' which ``serves the public interest by 
reducing the possibility that claims, finally allowed, will be given 
broader scope than is justified.''
    Conversely, the Office received a comment suggesting the use of a 
Phillips-type construction standard for all patents, stating that 
``claims in AIA trials should be construed as they have been or would 
be construed in a civil action to invalidate a patent under Patent Act 
section 282, including construing each claim of the patent in 
accordance with the ordinary and customary meaning of such claim as 
understood by one of ordinary skill in the art, the prosecution history 
pertaining to the patent, and prior judicial determinations and 
stipulations relating to the patent.'' The commenter also stated that 
``the PTAB should apply the Phillips construction during AIA trials 
because they are adjudicative proceedings like litigation,'' and not 
examination proceedings like inter partes reexamination.
    Response: The comments favoring retention of the BRI approach are 
adopted. The Office appreciates the suggestions and will continue to 
apply the broadest reasonable interpretation standard to claims in an 
unexpired patent at issue in an AIA proceeding. The United States Court 
of Appeals for the Federal Circuit (``Federal Circuit'') has held 
recently that the Office is authorized to employ the broadest 
reasonable construction approach to construing terms of an unexpired 
patent at issue in an inter partes review proceeding--the Federal 
Circuit found that the BRI approach is consistent with legislative 
intent and reasonable under the Office's rulemaking authority. In re 
Cuozzo Speed Techs., LLC, No. 2014-

[[Page 50722]]

1301, 2015 WL 4097949, at *7-8 (Fed. Cir. July 8, 2015). In making this 
determination, the Federal Circuit observed that ``[t]here is no 
indication that the AIA was designed to change the claim construction 
standard that the PTO has applied for more than 100 years. Congress is 
presumed to legislate against the background of the kind of 
longstanding, consistent existing law that is present here. Moreover, 
Congress in enacting the AIA was well aware that the broadest 
reasonable interpretation standard was the prevailing rule.'' Id. at 
*6. The Federal Circuit recognized that because an inter partes review 
proceeding provides the patent owner the opportunity to amend its 
claims, use of the broadest reasonable interpretation approach is 
appropriate, regardless of ``the fact that IPR may be said to be 
adjudicatory rather than an examination.'' Id. at *16. The Federal 
Circuit also stated, ``[a]lthough the opportunity to amend is cabined 
in the IPR setting, it is thus nonetheless available,'' and 
specifically addressed the prohibition on post-issuance broadening at 
issue in the case, further stating that at least this restriction on 
motions to amend ``does not distinguish pre-IPR processes or undermine 
the inferred congressional authorization of the broadest reasonable 
interpretation standard in IPRs.'' Cuozzo, 2015 WL 4097949, at 7.
    Comment 3: The Office received multiple comments recommending 
changing the claim construction standard in certain circumstances. 
These commenters advocated for the use of the claim construction 
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 
2005) (en banc) for some or all of the following circumstances: (a) 
Unexpired patents where the ability to amend claims is no longer 
present in the trial, such as when a patent owner has elected to forego 
the opportunity to amend; (b) unexpired patents where the patent will 
expire prior to the final decision; (c) unexpired patents subject to a 
terminal disclaimer prior to final decision; and/or (d) unexpired 
patents when the parties to the trial have each filed claim 
construction briefings in another tribunal on terms at issue in the 
trial.
    Response: These comments are adopted in part. The Office agrees 
that the application of a Phillips-type claim construction for claims 
of a patent that will expire prior to the issuance of a final decision 
is appropriate. Such patents essentially lack any viable opportunity to 
amend the claims in an AIA proceeding. Therefore, for patents that will 
expire prior to issuance of any final written decision by the Office, 
the Office proposes to apply a Phillips-type standard during the 
proceeding.
    A scenario where it is clear that a patent will expire before a 
final decision is issued by the Office is a definitive circumstance 
where a petitioner can determine which claim construction will be 
applied with guidance from the Office. Specifically, the Office 
proposes to amend 37 CFR 42.100(b), 42.200(b), and 42.300(b) to reflect 
this change in the claim construction standard for claims in patents 
that will expire before a final written decision is issued in an AIA 
proceeding. The Office also intends to issue specific guidelines in the 
Office Patent Trial Practice Guide. The Office invites comments on how 
to structure guidelines to implement this change. For instance, the 
Office welcomes comments on the following questions: Should the Office 
set forth guidelines where a petitioner may determine, before filing a 
petition, which claim construction approach will be applied by the 
Office based on the relevant facts? Should the petitioner, who believes 
that the subject patent will expire prior to issuance of a final 
written decision, be required to submit claim interpretation analysis 
under both a Phillips-type and broadest reasonable interpretation 
approaches or state that either approach yields the same result? Should 
the Office entertain briefing after a petition if filed, but before a 
patent owner preliminary response is filed, concerning what standard 
should be applied?
    As to the remaining scenarios set forth by commenters, the Office 
will continue to apply a broadest reasonable interpretation standard 
because at the time that a petition is filed in each of those 
scenarios, the patent owner's ability to amend remains available. To 
allow the patent owner unilaterally to decide to forego any opportunity 
to amend after a petition has been filed, and thereby opt-in to a 
Phillips-type construction, appears to be unworkable, given the 
timeline applicable to AIA proceedings. In particular, the timeline 
would not allow a petitioner adequate time to amend the petition to 
reflect a different claim construction standard. The Office invites 
comments suggesting any workable and efficient solutions for scenarios 
where the patent owner chooses to forego the right to amend claims in 
an AIA proceeding, including any suggested revisions to the rules or 
the Office Patent Trial Practice Guide.

Patent Owner's Motions To Amend

    The Office asked, ``What modifications, if any, should be made to 
the Board's practice regarding motions to amend?'' 79 FR at 36476. The 
Office received a spectrum of comments that ranged from seeking no 
change in amendment practice to proposals for liberal grant of 
amendments in AIA proceedings. The Office addresses these comments 
below.
    Since receipt of these comments, the Office has clarified its 
statement made in Idle Free System, Inc. v. Bergstrom, Inc., Case 
IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative), that 
``[t]he burden is not on the petitioner to show unpatentability, but on 
the patent owner to show patentable distinction over the prior art of 
record and also prior art known to the patent owner.'' Id. at 7 
(emphasis added). Specifically, the Office addressed what the 
references to ``prior art of record'' and ``prior art known to the 
patent owner'' mean, and how the burden of production shifts to the 
petitioner once the patent owner has made its prima facie case for 
patentability of the amendment. See MasterImage 3D, Inc. v. RealD Inc., 
Case IPR2015-00040, slip op. at 1-3 (PTAB July 15, 2015) (Paper 42). 
This decision clarifies that a patent owner must argue for the 
patentability of the proposed substitute claims over the prior art of 
record, including any art provided in light of a patent owner's duty of 
candor, and any other prior art or arguments supplied by the 
petitioner, in conjunction with the requirement that the proposed 
substitute claims be narrower than the claims that are being replaced.
    Comment 1: A number of commenters expressed satisfaction with the 
Board's current rules and practices for motions to amend. One commenter 
identified Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2014-
00027 (PTAB June 11, 2013) (Paper 26) (informative), as outlining 
practices consistent with congressional intent and ``striking an 
appropriate balance between the public's interest in challenging the 
patentability of questionable patents and a patent owner's interest in 
maintaining patent protection for a legitimate invention.'' Another 
commenter stated that although the Board's current requirements for 
motions to amend provide patent owners with a fair opportunity to 
narrow claims in response to a petitioner's arguments and provide 
petitioners with fair notice regarding the type of amendment they need 
to rebut, the Office should consider providing consistent guidance 
through a precedential opinion or other means.
    Response: These comments are adopted. The Office is committed to 
improving its rules and practices for motions to amend and AIA trial 
practice in general. Accordingly, the Office will

[[Page 50723]]

continue to make improvements and clarifications via the rule-making 
process, by updating the Office Patent Trial Practice Guide, and by 
designating opinions as precedential or informative, as warranted. For 
example, as discussed above, the Office has issued an opinion that 
clarifies what is meant by ``prior art of record'' and ``prior art 
known to the patent owner'' in the context of a patent owner's prima 
facie case of patentability in a motion to amend. See MasterImage, slip 
op. at 1-3.
    Comment 2: One commenter advocated eliminating the opportunity to 
amend claims in AIA trial proceedings based on the premise that AIA 
trial proceedings are better designed to be expedited proceedings for 
determining claim patentability, not an examination.
    Response: As the commenter recognizes, a patent owner's right to 
file a motion to amend is statutorily mandated (35 U.S.C. 316(d), 
326(d)), as is the duty of the Director to provide standards and 
procedures for allowing such amendment (35 U.S.C. 316(a)(9), 
326(a)(9)). Absent a change in statutory authority, the Office cannot 
withdraw the opportunity to amend claims in AIA trial proceedings.
    Comment 3: Several commenters stated that the burden of proving the 
patentability of any proposed substitute claim should remain with the 
patent owner. Other commenters stated the contrary--that the burden 
should be shifted to the patent challenger to prove a proposed 
substitute claim unpatentable. Other commenters suggested intermediate 
positions targeted to reducing the burden on the patent owner, who 
submits a motion to amend, by requiring that the patent owner only bear 
the burden of proving patentability over the cited art in the petition 
or asserted grounds of unpatentability. Another commenter suggested 
that, similar to practice before the European Patent Office, motions to 
amend in AIA trials could include the participation of a USPTO Examiner 
from the technology center, preferably the examiner who originally 
granted the subject patent, and be limited to reviewing the broadest 
claim of a substitute claim set to allow patent owners to present 
multiple narrowing claim sets as fallback positions.
    Response: These comments are adopted in part. The Board currently 
does not contemplate a change in rules or practice to shift the 
ultimate burden of persuasion on patentability of proposed substitute 
claims from the patent owner to the petitioner. Depending on the 
amendment, a petitioner may not have an interest in challenging 
patentability of any substitute claims. Therefore, the ultimate burden 
of persuasion on patent owner's motion to amend remains best situated 
with the patent owner, to ensure that there is a clear representation 
on the record that the proposed substitute claims are patentable, given 
that there is no opportunity for separate examination of these newly 
proposed substitute claims in these adjudicatory-style AIA proceedings. 
See Microsoft Corp. v. Proxyconn, Inc., Nos. 2014-1542, 2014-1543, 2015 
WL 3747257, at *12 (Fed. Cir. June 16, 2015) (stating ultimate burden 
of persuasion remains with the patent owner, the movant, to demonstrate 
the patentability of the substitute claims).
    The Board's decision in MasterImage clarifies the meaning of the 
terms ``prior art of record'' and ``prior art known to the patent 
owner'' as set forth in Idle Free, which stated that the burden is on 
the patent owner ``to show patentable distinction over the prior art of 
record and also prior art known to the patent owner.'' Idle Free, slip 
op. at 7. The Office stated in MasterImage that, ``[t]he reference to 
`prior art of record' in the above-quoted text, as well as everywhere 
else in Idle Free, should be understood as referring to: a. any 
material art in the prosecution history of the patent; b. any material 
art of record in the current proceeding, including art asserted in 
grounds on which the Board did not institute review; and c. any 
material art of record in any other proceeding before the Office 
involving the patent.'' MasterImage, slip op. at 2. The Office also 
stated that the term ``prior art known to the patent owner,'' as used 
in Idle Free, ``should be understood as no more than the material prior 
art that Patent Owner makes of record in the current proceeding 
pursuant to its duty of candor and good faith to the Office under 37 
CFR 42.11, in light of a Motion to Amend.'' Id.
    At this time, the Office does not contemplate seeking assistance 
from the Examining Corps for review of motions to amend.
    In addition, the Office has clarified how the burden of production 
shifts between the parties with regard to a motion to amend. ``With 
respect to a motion to amend, once Patent Owner has set forth a prima 
facie case of patentability of narrower substitute claims over the 
prior art of record, the burden of production shifts to the petitioner. 
In its opposition, the petitioner may explain why the patent owner did 
not make out a prima facie case of patentability, or attempt to rebut 
that prima facie case, by addressing Patent Owner's evidence and 
arguments and/or by identifying and applying additional prior art 
against proposed substitute claims. Patent Owner has an opportunity to 
respond in its reply. The ultimate burden of persuasion remains with 
Patent Owner, the movant, to demonstrate the patentability of the 
amended claims.'' MasterImage, slip op. at 2 (citing Microsoft, 2015 WL 
3747257, at *12).
    Comment 4: Several commenters suggested that patent owners should 
not be required to cancel a challenged claim in order to submit a 
substitute claim and/or should be permitted to propose more than one 
substitute claim per challenged claim.
    Response: Rule 42.221(a)(3) provides that a motion to amend may 
``cancel a challenged claim or propose a reasonable number of 
substitute claims,'' and for efficiency, sets forth the rebuttable 
presumption ``that only one substitute claim would be needed to replace 
each challenged claim.'' As 37 CFR 42.121(a)(3) and 42.221(a)(3) 
provides, this presumption ``may be rebutted by a demonstration of 
need.'' This strikes a reasonable balance between maintaining the 
efficiency of the proceedings and allowing a patent owner to present 
additional substitute claims when need is shown. Although patent owners 
are encouraged to submit a single substitute claim for each canceled 
claim, the Rules do not prohibit a motion to amend that proposes more 
than one replacement claim for each cancelled claim. Patent owners are 
encouraged to confer with the Board where an appropriate showing of 
need can be made. The Board does not, however, contemplate a change in 
rules or practice at this time.
    Comment 5: Several commenters suggested that motions to amend 
should be liberally allowed. One commenter suggested the Office should 
evaluate a motion to amend in the same way that the entry of a 
supplemental response in prosecution is evaluated, as under 37 CFR 
1.111(a)(2).
    Response: These suggestions are not adopted. Under 35 U.S.C. 
316(a)(9) and 326(a)(9), the Office has the authority to set forth 
standards and procedures for allowing a patent owner to move to amend 
the patent under 35 U.S.C. 316(d) and 326(d). And 35 U.S.C. 316(d) and 
326(d) sets forth certain statutory limitations for amendments for a 
patent in an AIA proceeding, including limiting the number of proposed 
claims to a ``reasonable number of substitute claims'' (35 U.S.C. 
316(d)(1)(B)) and prohibiting amendments that ``enlarge the scope of 
the claims of the patent or introduce new matter'' (35 U.S.C.

[[Page 50724]]

316(d)(3)). Thus, by statute, motions to amend cannot be entered in the 
same way as amendments that are entered during prosecution, which are 
not bound by such restrictions.
    Moreover, AIA proceedings are neither ex parte patent prosecution 
nor patent reexamination or reissue. The Board does not conduct a prior 
art search to evaluate the patentability of the proposed substitute 
claims, and any such requirement would be impractical given the 
statutory structure of AIA proceedings. If a motion to amend is 
granted, the substitute claims become part of an issued patent, without 
any further examination by the Office. Because of this constraint, the 
Office has set forth rules for motions to amend that account for the 
absence of an independent examination by the Office where a prior art 
search is performed as would be done during prosecution, reexamination, 
or reissue.
    As set forth above, however, the Office does recognize a 
clarification of amendment practice that affirmatively states that a 
patent owner must argue for the patentability of the proposed 
substitute claims over the prior art of record, including art provided 
in light of a patent owner's duty of candor and any other prior art or 
arguments supplied by the petitioner, in conjunction with the statutory 
requirement that the proposed substitute claims be narrower than the 
claims that are being replaced. In light of these requirements, the 
Office has explained how the burden of production shifts to the 
petitioner once the patent owner has set forth a prima facie case of 
patentability of narrower substitute claims. MasterImage, slip op. at 
3.
    Comment 6: Several commenters suggested that the Office provide 
additional guidance in conferences regarding motion to amend practice, 
including guidance on what prior art the patent owner needs to 
distinguish in a motion to amend. One commenter stated that the Office 
could confirm for a patent owner whether a new prior art search is 
required and whether providing information similar to the accelerated 
examination support documents (ESD) would be sufficient for a patent 
owner to carry its burden. Another commenter suggested making clear in 
the Rules and the Trial Practice Guide that a reissue application can 
be utilized after a final written decision as an examination mechanism 
for amending claims and that the burden of persuasion for permitting 
the Board to consider a motion to amend is not the same as the burden 
of proof as to the patentability of any claims that are the subject to 
a motion to amend.
    Response: These comments are adopted in part as set forth above. 
The Office has explained how the burden of production shifts to the 
petitioner once the patent owner has set forth a prima facie case of 
patentability of narrower substitute claims. MasterImage, slip op. at 
3. Also, 37 CFR 42.121(a) and 42.122(a) require the patent owner to 
hold a conference call with the Office before the patent owner files a 
motion to amend. During that call, the judges provide technical 
guidance to the patent owner and the petitioner regarding the motion. 
If the parties have questions regarding the proper scope of a motion to 
amend, the parties may discuss those issues with the judges during the 
conference call. In addition, the Board notes the following Board 
decisions on motions to amend as further guidance: MasterImage, slip 
op. at 1-3); Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-
00027 (PTAB June 11, 2013) (Paper 26) (informative); Int'l Flavors & 
Fragrances Inc. v. United States of America, Case IPR2013-00124 (PTAB 
May 20, 2014) (Paper 12) (informative); Corning Optical Comms. RF, LLC 
v. PPC Broadband, Inc., Case IPR2014-00441 (PTAB Oct. 30, 2014) (Paper 
19); Riverbed Tech., Inc. v. Silver Peak Systems, Inc., Case IPR2013-
00403 (PTAB Dec. 30, 2014) (Paper 33); Reg Synthetic Fuels LLC v. Neste 
Oil OYJ, Case IPR2014-00192 (PTAB June 5, 2015) (Paper 48).
    As for whether to revise the Rules and the Trial Practice Guide to 
state that a reissue application can be utilized as a mechanism for 
amending the claims after final written decision, the Office declines 
to propose a blanket rule applicable to all reissues, which have 
additional requirements governing those proceedings.
    As for distinguishing between the burden of persuasion for 
permitting the Board to consider a motion to amend and the burden of 
proof as to patentability, the patent owner has a statutory right to 
file a motion to amend under 35 U.S.C. 316(d) and 326(d). Thus, there 
is no burden of persuasion for permitting the Board to consider a 
motion to amend, as the Board must consider a motion to amend that is 
filed in a proceeding.
    Comment 7: One commenter suggested that the Office should allow 
patent owners to cure minor defects in motions to amend, such as the 
failure to construe a claim term that the Board deems necessary or 
failure to provide written description support for the substitute claim 
language. The commenter further suggested that the petitioner should be 
allowed to respond to these further comments by the patent owner.
    Response: If the Board deems it appropriate, the Board may allow a 
patent owner to cure minor defects in a motion to amend upon request. 
Given the time constraints of these proceedings, however, the suggested 
further exchange of briefing may be incompatible with the case 
schedule. To the extent a patent owner is aware of any such defects, 
the Office recommends that the patent owner seek authorization from the 
Board to revise its motion to amend as soon as possible.
    Comment 8: Several commenters suggested that the Office should 
rescind the patent owner estoppel provision of 37 CFR 42.73(d)(3) 
because the commenters believed the Rule ``precludes a patent owner 
from obtaining from the Office in another proceeding a patent claim 
that could have been filed in response to any properly raised ground of 
unpatentability for a finally refused or cancelled claim.''
    Response: This suggestion is not adopted. Under 37 CFR 42.73(d)(3), 
a patent applicant or owner is precluded from taking action 
inconsistent with the adverse judgment, including obtaining in any 
patent (1) A claim that is not patentably distinct from a finally 
refused or canceled claim; or (2) An amendment of a specification or of 
a drawing that was denied during the trial proceeding, but this 
provision does not apply to an application or patent that has a 
different written description. Thus, 37 CFR 42.73(d)(3) does not 
expressly preclude a patent owner from obtaining, in another 
proceeding, all patent claims that could have been filed in response to 
any properly raised ground of unpatentability for a finally refused or 
cancelled claim, as the commenters suggest. By its terms, this rule 
precludes a patent applicant or owner from obtaining, in another 
proceeding, claims that are not patentably distinct from a finally 
refused or canceled claim.
    Comment 9: One commenter suggested that the rules are unfair 
because the patent owner must file its motion to amend at the same time 
that it files its patent owner response. The commenter states, 
``[t]herefore, the patent owner must put forward all its arguments for 
patentability without knowing whether the original or amended claims 
will be reviewed by the PTAB.''
    Response: When the patent owner files its patent owner response, 
the Board will have issued its decision on institution, which 
identifies the grounds and claims on which the inter partes or

[[Page 50725]]

post-grant review is instituted. Moreover, AIA proceedings before the 
Office are required, by statute, to be completed no later than one year 
from the date on which the Director notices the institution of a 
review, except where good cause is shown to extend the one-year period, 
which extension may be no more than six months. 35 U.S.C. 316(a)(11); 
37 CFR 42.100(c). Due to the time constraints imposed on these 
proceedings, the Office deemed it most efficient for patent owners to 
file their motions to amend no later than the filing of the patent 
owner response. See 37 CFR 42.121, 42.221. The patent owner, however, 
may file a motion to amend at an earlier stage of the proceeding.
    Comment 10: One commenter suggested that when a patent owner 
concedes the unpatentability of an existing claim and files a non-
contingent motion to amend, claim cancellation should take place 
immediately. The commenter stated that, under current practice, the 
conceded claim remains in effect until the Board issues its final 
written decision, which allows the patent owner to assert the conceded 
claim in parallel proceedings. Accordingly, the commenter suggested 
that a patent owner should not be permitted to concede a claim's 
patentability before the Board while continuing to assert it in 
litigation.
    Response: This suggestion is not adopted. The defendant in such 
litigation may seek relief before the district court. The Board 
typically considers all papers at once for purposes of rendering the 
final written decision. That practice is generally most efficient, in 
light of the large number of cases pending before the Board. Also, a 
patent owner who asserts a claim in a parallel proceeding that was 
conceded to be unpatentable may face potential sanctions, and 
registered practitioners who assert such a claim may face disciplinary 
investigation by the Office of Enrollment and Discipline. In the event, 
however, that a patent owner concedes unpatentability and requests 
cancellation of any claims, the parties may request a conference call 
with the panel to request cancellation of those claims before issuing 
the final written decision.
    Comment 11: One commenter suggested that if a motion to amend is 
denied, the patent owner should be allowed to convert the denied motion 
to amend into an ex parte reexamination of the substitute claims. 
Accordingly, any prior art raised in either the motion or the 
opposition should be applied as the substantial new question of 
patentability in reexamination.
    Response: This suggestion is not adopted. The rules for a request 
for ex parte reexamination apply different parameters than the rules 
for motions to amend in AIA proceedings. Compare 37 CFR 1.510(b) with 
37 CFR 42.121, 42.221. Thus, the Office cannot convert a denied motion 
to amend into an ex parte reexamination of the proposed substitute 
claims that does not address the requirements of a request for ex parte 
reexamination.

Patent Owner's Preliminary Response

    The Office asked, ``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?'' 79 FR at 36476. The Office received comments that range from 
advocating preserving the current prohibition on the patent owner's 
ability to assert new testimonial evidence at the preliminary response 
stage, an intermediate position of allowing new testimonial evidence on 
issues for which the patent owner bears the burden of proof or in 
response to petitioner's declarant, to allowance of new testimonial 
evidence by patent owner at the preliminary response stage with no 
restriction on scope. Commenters did express an overall concern with 
the ability of parties to conduct adequate discovery relating to 
testimonial evidence and adhering to the statutory timeline for 
instituting proceedings.
    The Office proposes amending the rules to allow the patent owner to 
file new testimonial evidence with its preliminary response. In order 
to be able to meet the three-month statutory deadline for issuing a 
decision on institution, the rules will provide expressly that no right 
of cross-examination of a declarant exists before institution. Because 
the time frame for the preliminary phase of an AIA proceeding does not 
allow for such cross-examination as of right, nor for the petitioner to 
file a reply brief as of right, the Office proposes amending the rules 
to provide that any factual dispute that is material to the institution 
decision will be resolved in favor of the petitioner solely for 
purposes of making a determination about whether to institute. This is 
proposed, among other reasons, to preserve petitioner's right to 
challenge statements made by the patent owner's declarant.
    Comment 1: Several commenters suggested that the patent owner 
should be allowed to rely on new testimonial evidence in its 
preliminary response to the petition given that the petitioner may rely 
upon such evidence in its petition, and that the current practice of 
not allowing a patent owner to rely on such evidence is unfair. Within 
these comments were examples of testimonial evidence that should be 
allowed in a preliminary response, such as testimony related to claim 
construction, issues regarding obviousness, and issues for which the 
patent owner has the burden of proof. Certain comments suggested that 
early development of the record would increase efficiency by leading to 
fewer institutions or institution on fewer grounds. Other comments said 
that the current rule should not be changed because the time period 
prior to institution does not allow a petitioner to evaluate fully the 
new evidence, the petitioner would not have an opportunity to cross-
examine the witness, and the patent owner has a full opportunity to 
submit evidence post-institution.
    Response: The Office proposes to amend the rules for the patent 
owner preliminary response (37 CFR 42.107, 42.207) to allow new 
testimonial evidence, thereby adopting the suggestions that the patent 
owner be allowed to rely upon supporting testimonial evidence in 
response to the petition. Sections 313 and 323 of Title 35 state that 
the patent owner may file a preliminary response that sets forth 
reasons why no institution should be granted. Therefore, the Office 
believes that it would be fair and equitable to consider supporting 
evidence submitted with a preliminary response.
    If supporting evidence is submitted by a patent owner, cross-
examination of the witness providing the testimony is likely to be 
permitted only after the institution of the proceeding, given the time 
constraints surrounding the institution decision. Section 316(a)(5)(A) 
of Title 35 states that the Director shall prescribe regulations 
setting forth standards and procedures for discovery of relevant 
evidence including the depositions of witnesses submitting affidavits 
or declarations. Allowing for cross-examination as of right prior to 
the institution of a proceeding would negatively impact the ability of 
the Office to meet the statutory requirements set out in 35 U.S.C. 
314(b) and 324(c), and would result in more cost to the parties before 
a review is instituted.
    In order for the Board to act consistently when confronted with 
material factual disputes in the institution decision briefing and 
evidence, the Office proposes that any

[[Page 50726]]

such factual disputes will be resolved in favor of the petitioner 
solely for purposes of deciding whether to institute. The petitioner 
also will be afforded an opportunity to seek permission to file a reply 
brief to respond to a preliminary response that presents testimonial 
evidence, though it will not be able to file such a reply as of right.
    Comment 2: The Office received several comments suggesting that the 
Board provide for the submission of a petitioner reply to the patent 
owner preliminary response, particularly if the Board were to amend the 
rule for the patent owner preliminary response to allow new testimonial 
evidence. Many of these commenters stated that the petition itself is 
limited because the petitioner cannot anticipate all arguments that the 
patent owner may make (e.g., the patent owner preliminary response may 
present additional claim constructions), and that a petitioner's 
rehearing request does not provide a timely opportunity for the 
petitioner to reply to the patent owner preliminary response. However, 
one commenter opposed this suggestion, stating that ``in all fairness 
the only way to reasonably address such a drastic change were it 
implemented would be by the inventor/[patent owner] being allowed to 
then file a sur-reply to Petitioner's reply . . . .'' Many of the 
commenters noted the short statutory timeframe for the pre-institution 
phase as a factor that limits the number of briefs that may be allowed.
    Response: Because the Office proposes to amend the rules for the 
patent owner preliminary response (37 CFR 42.107, 42.207) to allow new 
testimonial evidence, the Office proposes to change the rules to 
provide for a petitioner to seek leave to file a reply to the patent 
owner preliminary response. In particular, each of 35 U.S.C. 316(a)(13) 
and 326(a)(12) states that the Director shall prescribe regulations 
providing the petitioner with ``at least 1 opportunity to file written 
comments.'' The Office proposes to change the rules to provide 
expressly that a petitioner may seek leave to file a reply to a 
preliminary response including new testimonial evidence, so that the 
Office may allow a reply when the circumstances so warrant.
    Comment 3: Several commenters requested clarification of ``new 
testimonial evidence'' as used in 37 CFR 42.107(c). These comments 
indicated that the current rules, procedures, and cases do not provide 
adequate guidance as to what testimonial evidence is permitted in a 
preliminary response.
    Response: Because the Office proposes to amend the rules for the 
patent owner preliminary response (37 CFR 42.107, 42.207) to allow new 
testimonial evidence, additional clarification is not necessary.

Additional Discovery

    The Office asked, ``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?'' 79 FR at 36476. The 
Office provides guidance on its Web site, see, e.g., http://www.uspto.gov/blog/aia/entry/message_from_administrative_patent_judges, 
in response to comments generated from these questions, and plans to 
revise the Office Patent Trial Practice Guide to reflect this guidance.
    Comment 1: A number of comments indicated that the Garmin factors 
are appropriate. Some of the comments further noted that the Garmin 
factors help the Office to strike the right balance for AIA trial 
proceedings, permitting parties to obtain meaningful discovery while 
preventing expensive, broad discovery. The comments also urged the 
Office to continue applying those factors. Several comments also 
expressed the view that the first, third, and fifth Garmin factors 
provide an important safeguard to minimize costs and limit 
distractions, ensuring fast and efficient resolution on the merits.
    Response: These comments are adopted. The Office appreciates the 
suggestions and will continue to apply the Garmin factors on a case-by-
case basis when considering whether additional discovery in an inter 
partes review is necessary in the interest of justice, as follows:
    1. More Than A Possibility And Mere Allegation. The mere 
possibility of finding something useful, and mere allegation that 
something useful will be found, are insufficient. Thus, the party 
requesting discovery already should be in possession of a threshold 
amount of evidence or reasoning tending to show beyond speculation that 
something useful will be uncovered. ``Useful'' does not mean merely 
``relevant'' or ``admissible,'' but rather means favorable in 
substantive value to a contention of the party moving for discovery.
    2. Litigation Positions And Underlying Basis. Asking for the other 
party's litigation positions and the underlying basis for those 
positions is not necessarily in the interest of justice.
    3. Ability To Generate Equivalent Information By Other Means. 
Discovery of information a party reasonably can figure out, generate, 
obtain, or assemble without a discovery request would not be in the 
interest of justice.
    4. Easily Understandable Instructions. The requests themselves 
should be easily understandable. For example, ten pages of complex 
instructions are prima facie unclear.
    5. Requests Not Overly Burdensome To Answer. The Board considers 
financial burden, burden on human resources, and burden on meeting the 
time schedule of the review. Requests should be sensible and 
responsibly tailored according to a genuine need.
    Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, 
slip op. at 6-7 (PTAB Mar. 5, 2013) (Paper 26) (informative). The 
Office also applies similar factors in post-grant reviews and covered 
business method patent reviews when deciding whether the requested 
additional discovery is supported by a good cause showing and ``limited 
to evidence directly related to factual assertions advanced'' by a 
party. See 37 CFR 42.224; Bloomberg Inc. v. Markets-Alert Pty Ltd, Case 
CBM2013-00005, slip op. at 3-5 (PTAB May 29, 2013) (Paper 32).
    Comment 2: A comment suggested that the Office should provide rule-
based guidance on the ``interest of justice'' standard.
    Response: As discovery disputes are highly fact dependent, the 
Office has found that the flexible approach as set forth in Garmin 
provides helpful guidance to the parties and assists the Office in 
achieving the appropriate balance, permitting meaningful discovery, 
while securing the just, speedy, and inexpensive resolution of every 
proceeding.
    Comment 3: One comment suggested that the Office should continue to 
place emphasis on maintaining the one-year trial schedule by 
encouraging parties to raise discovery issues early in the proceeding, 
even during the pre-institution stage.
    Response: This comment is adopted. As explained in Garmin regarding 
Factor 5--discovery requests must not be overly burdensome to answer--
the Office will consider the burden on meeting the schedule of the 
proceeding. Garmin, Case IPR2012-00001, slip op. at 7. For example, as 
discussed below, the Office has granted reasonable, narrowly tailored 
discovery requests prior to institution when the patent owner raises 
sufficient concerns regarding the petitioner's identification of real 
parties-in-interest. Moreover, the Scheduling Order of each trial 
utilizes sequenced discovery, whereby parties can conduct meaningful 
discovery

[[Page 50727]]

before they are required to submit their respective motions and 
oppositions, taking into account the complexity of the proceeding, 
while ensuring that the trial is completed within one year of 
institution. Parties are encouraged to raise discovery issues, and 
confer with each other regarding such issues, as soon as they arise in 
a proceeding.
    Comment 4: One comment suggested that Factor 2 should not be 
applied as a per se rule.
    Response: Garmin sets forth a flexible approach in which the Garmin 
factors are not per se rules. As explained in Garmin regarding Factor 
2, the Board has established rules and practices for the presentation 
of arguments and evidence, and there is a proper time and place for 
each party to make its presentation. Garmin, Case IPR2012-00001, slip 
op. at 13. For instance, under 37 CFR 42.51(b)(1) for routine 
discovery, a party has the opportunity to cross-examine the opposing 
party's declarant with regard to the basis of his or her testimony. 
Moreover, as discovery disputes are highly fact dependent, the Office 
decides each issue on a case-by-case basis, taking account of the 
specific facts of the proceeding. See, e.g., Bloomberg Inc. v. Markets-
Alert Pty Ltd., Case CBM2013-00005, slip op. at 6-7 (PTAB May 29, 2013) 
(Paper 32) (granting a specific and narrowly tailored request seeking 
information considered by an expert witness in connection with the 
preparation of his declaration filed in the proceeding).
    Comment 5: One comment recommended that the Office expressly 
consider the specificity of the request, require parties to identify 
requested documents with the greatest possible specificity, and reject 
broad, amorphous requests that do not reasonably identify responsive 
documents. Other comments urged the Office to add the following 
additional factors, ensuring that the Garmin factors would be applied 
correctly and permitting additional discovery when it is actually 
warranted: (1) Whether the information is solely within the possession 
of the other party; (2) whether the information already has been 
produced in a related matter; and (3) whether the discovery sought 
relates to jurisdictional issues under 35 U.S.C. 315 and 325.
    Response: Garmin sets forth a flexible and representative framework 
for providing helpful guidance to the parties, and assisting the Office 
to decide whether additional discovery requested in an inter partes 
review is necessary in the interest of justice, consistent with 35 
U.S.C. 316(a)(5), or whether additional discovery in a post-grant 
review is supported by a good cause showing, consistent with 35 U.S.C. 
326(a)(5). The list of factors set forth in Garmin is not exhaustive. 
The Office applies the factors on a case-by-case basis, considering the 
particular facts of each discovery request, including the particular 
arguments raised by a party seeking additional discovery. Under this 
flexible approach, parties are permitted to present their arguments 
using different factors including those suggested in the comments. In 
fact, the suggested additional factors are subsumed effectively already 
under the Garmin factors, and have been considered by the Office in 
deciding whether to grant additional discovery requests. See, e.g., 
Int'l Sec. Exch., LLC v. Chi. Bd. Options Exch., Inc., Case IPR2014-
00097 (PTAB July 14, 2014) (Paper 20) (granting a specific, narrowly 
tailored, and reasonable request for additional discovery of 
information that Patent Owner could not have obtained reasonably 
without a discovery request). As noted below, the Office frequently has 
granted reasonable discovery requests that are specific, narrowly 
tailored, and not overly burdensome in cases where a patent owner 
timely raises a real party-in-interest or privity challenge. See, e.g., 
Nestle USA, Inc. v. Steuben Foods, Case IPR2015-00195 (PTAB Feb. 27, 
2015) (Paper 21) (granting Patent Owner's request for a sales agreement 
between Petitioner and another entity that allegedly contains 
indemnity, control, and cooperation provisions).
    Comment 6: One comment suggested combining Factor 4 and Factor 5.
    Response: Factor 4 and Factor 5 address different concerns. In 
particular, Factor 4 promotes the use of easily understandable 
instructions and, thereby, guards against the use of long and complex 
instructions that could unduly burden the producing party. Factor 5, by 
contrast, focuses on burdens and time constraints associated with 
complying with a request for additional discovery and, thereby, assists 
the Office in limiting discovery to requests that can be satisfied 
without disrupting the schedule, and which do not impose undue 
financial or human resource burdens on the producing party. As 
discussed above, parties have the flexibility under the Garmin 
framework to adopt a different combination of factors to present their 
arguments, including combining their analyses regarding Factor 4 and 
Factor 5.
    Comment 7: Several comments indicated that, although the Garmin 
factors are appropriate, they sometimes are being applied incorrectly 
to require the moving party to have the actual evidence being sought.
    Response: As explained in Garmin, the moving party, who is seeking 
additional discovery, should present a threshold amount of evidence or 
reasoning tending to show beyond speculation that something useful will 
be uncovered. Garmin, Case IPR2012-00001, slip op. at 7-8. This factor 
ensures that the opposing party is not overly burdened, and the 
proceeding not unnecessarily delayed, by speculative requests where 
discovery is not warranted. The Office, however, does not require the 
moving party to have any actual evidence of the type being sought, for 
example, where reasoning is presented that tends to show beyond 
speculation that something useful will be uncovered. Furthermore, a 
party who is dissatisfied with a decision and believes the Office 
misapprehended or overlooked a matter in denying additional discovery 
may file a request for rehearing, without prior authorization. See 37 
CFR 42.71(d).

Obviousness

    The Office asked, ``Under what circumstances should the Board 
permit the 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?'' 79 FR 
at 36476. The Office provides guidance on its Web site, see, e.g., 
http://www.uspto.gov/blog/aia/entry/message_from_administrative_patent_judges, in response to comments 
generated from these questions, and will revise the Office Patent Trial 
Practice Guide to reflect this guidance.
    Comment 1: Several comments suggested that the Office should permit 
discovery of evidence of non-obviousness held by the petitioner in all 
cases. Another comment indicated that, if a request is narrowly 
tailored, this may be one situation where additional discovery may be 
permissible. In contrast, several other comments recommended that the 
Office should very rarely, if ever, permit discovery of the 
petitioner's product, as it would require a mini-trial on whether the 
petitioner's product infringes the patent, overwhelming the AIA trial 
process, undermining the efficient, focused procedure, making it 
impossible to conclude the AIA trial proceedings within the statutory 
deadline, and imposing a significant burden on the petitioner. Several 
comments further suggested that the Office should

[[Page 50728]]

continue to apply the Garmin factors (see Garmin Int'l Inc. v. Cuozzo 
Speed Techs. LLC, IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) 
(informative)), allowing discovery only when the patent owner 
establishes that the additional discovery is in the interest of 
justice.
    Response: The Office appreciates the varying points of view. The 
Office has considered these comments and believes that the Garmin 
factors currently provide appropriate and sufficient guidance for how 
to handle requests for additional discovery, which the Office will 
continue to decide on a case-by-case basis. The Office will continue to 
seek feedback as the case law develops as to whether a more specific 
rule for this type of discovery is warranted or needed. The Office 
encourages parties to confer and reach an agreement on the information 
to exchange early in the proceeding, resolving discovery issues 
promptly and efficiently. See 37 CFR 42.51(a). As explained in the 
Office Patent Trial Practice Guide, the parties may agree to certain 
initial disclosures, including information regarding secondary indicia 
of non-obviousness from the petitioner. Office Patent Trial Practice 
Guide, 77 FR at 48762. In situations in which there is a disagreement 
among the parties, the Office will decide on a case-by-case basis 
whether additional discovery in an inter partes review is necessary in 
the interest of justice, or whether additional discovery in a post-
grant review is supported by a good cause showing, based on the 
particular facts of each request, consistent with 35 U.S.C. 316(a)(5) 
and 326(a)(5). As discussed above, the Garmin factors provide helpful 
guidance to the parties and assist the Office to achieve the 
appropriate balance, permitting meaningful discovery, while securing 
the just, speedy, and inexpensive resolution of every proceeding. The 
Office plans to add further discussion as to how the Garmin factors 
have been applied in the Office Patent Trial Practice Guide.
    Comment 2: Several comments indicated that a patent owner seeking 
additional discovery regarding the petitioner's product in support of a 
commercial success non-obviousness argument should have to show that 
the challenged patent claims read on the petitioner's product, that the 
product was commercially successful, and that the alleged success 
resulted from the patented feature. Several other comments, however, 
suggested that requiring a patent owner to prove such a nexus between 
the evidence being sought and the claims places too high a burden on 
the patent owner. One comment urged the Office to allow a patent owner 
to obtain secondary consideration evidence from the petitioner when the 
patent owner presents a good-faith argument that there is a nexus 
between such evidence and the claims, such as by infringement 
contentions offered in the related district court litigation. Several 
comments recommended that a patent owner should be permitted to obtain 
additional discovery from a petitioner when the patent owner 
demonstrates that the petitioner is reasonably likely to possess 
evidence of secondary considerations, relaxing the first Garmin Factor. 
A few other comments suggested that the Office should permit limited 
discovery of the petitioner's evidence of secondary considerations when 
the patent owner has presented a sufficient showing of a nexus.
    Response: The Office recognizes that it is important to provide a 
patent owner a full and fair opportunity to develop arguments regarding 
secondary considerations. The Office, therefore, agrees that a 
conclusive showing of nexus between the claimed invention and the 
information being sought through discovery is not required at the time 
the patent owner requests additional discovery. Nonetheless, some 
showing of nexus is required to ensure that additional discovery is 
necessary in the interest of justice, in an inter partes review, or is 
supported by a good cause showing, in a post-grant review. See 35 
U.S.C. 316(a)(5) and 326(a)(5); 37 CFR 42.51(b)(2) and 42.224. Notably, 
as explained in Garmin concerning Factor 1, the mere possibility of 
finding something useful, and mere allegation that something useful 
will be found, are insufficient to demonstrate that the requested 
discovery is necessary in the interest of justice. Garmin, slip op. at 
6. A patent owner seeking secondary consideration evidence from a 
petitioner should present a threshold amount of evidence or reasoning 
tending to show beyond speculation that something useful will be 
uncovered. A mere infringement contention or allegation that the claims 
reasonably could be read to cover the petitioner's product is generally 
insufficient, because such a contention or allegation, for example, 
does not show necessarily that the alleged commercial success derives 
from the claimed feature. Nor does it account for other desirable 
features of the petitioner's product or market position that could have 
contributed to the alleged commercial success. See e.g., John's Lone 
Star Distrib., Inc. v. Thermolife Int'l, LLC, IPR2014-01201 (PTAB May 
13, 2015) (Paper 30). The Office plans to add further discussion on 
this issue to the Office Patent Trial Practice Guide.
    Comment 3: One comment recommended that the Office permit the 
patent owner to serve a limited number of focused interrogatories and 
requests for production related to secondary considerations, and 
provide a schedule for the discovery.
    Response: The Office declines to adopt a mandatory rule regarding 
additional discovery of secondary considerations, but will continue to 
entertain the need for such discovery on a case-by-case basis. 
Moreover, as provided in 37 CFR 42.51(a)(1) and (b)(2), parties may 
agree to additional discovery, including answering focused 
interrogatories and production of documents, even prior to institution. 
The Office also encourages and facilitates such cooperation between 
parties. See, e.g., Square, Inc. v. REM Holdings 3, LLC, Case IPR2014-
00312, slip op. at 2-4 (PTAB Sep. 15, 2014) (Paper 23) (In response to 
the Board's request, the parties conferred and reached an agreement as 
to the Patent Owner's focused and narrowly tailored interrogatories and 
document request.). Balancing fairness concerns with the need to meet 
statutory deadlines, the Office, at this time, declines to make 
additional discovery on secondary considerations available as a matter 
of right, given that all other types of additional discovery may be 
obtained only upon a showing based on the Garmin factors.

Real Party in Interest

    The Office asked, ``Should a Patent Owner be able to raise a 
challenge regarding a real party in interest at any time during a 
trial?'' 79 FR at 36476. The Office provides guidance below in response 
to comments generated from these questions, and will revise the Office 
Patent Trial Practice Guide to reflect this guidance.
    Comment 1: A number of comments indicated that a patent owner 
should be able to raise a challenge regarding a real party-in-interest 
or privity at any time during a trial proceeding. A few comments also 
suggested that the Office should encourage or require the patent owner 
to raise this challenge in its preliminary response, so that the Office 
could consider this issue when determining whether or not to institute 
a review and resolve it promptly. Several comments further recommended 
that a patent owner may raise this challenge after institution if it 
provides a reasonable explanation as to why it could not have raised 
such a challenge

[[Page 50729]]

earlier in the proceeding. One comment, however, opposed any change 
that would allow a patent owner to challenge the identity of a real 
party-in-interest at any time during a trial. Another comment also 
opposed allowing patent owners to make a belated challenge under 35 
U.S.C. 312(a) for a petitioner's failure to name all real parties-in-
interest.
    Response: The Office recognizes that it is important to resolve 
real party-in-interest and privity issues as early as possible, 
preferably in the preliminary stage of the proceeding prior to 
institution, to avoid unnecessary delays and to minimize cost and 
burden on the parties and the resources of the Office. In most cases, 
the patent owner also recognizes the benefit of raising a real party-
in-interest or privity challenge early in the proceeding, before or 
with the filing of its preliminary response, to avoid the cost and 
burden of a trial if the challenge is successful.
    To balance efficiency with fairness, the Office, in general, will 
permit a patent owner to raise a challenge regarding a real party-in-
interest or privity at any time during a trial proceeding. Such a 
position is consistent with the final rule notice. See Changes to 
Implement Inter Partes Review Proceedings, Post-Grant Review 
Proceedings, and Transitional Program for Covered Business Method 
Patents; Final Rule, 77 FR 48680, 48695 (Aug. 14, 2012) (``After 
institution, standing issues may still be raised during trial. A patent 
owner may seek authority from the Board to take pertinent discovery or 
to file a motion to challenge the petitioner's standing.''). With 
respect to a late challenge that reasonably could have been raised 
earlier in the proceeding, the Office will consider the impact of such 
a delay on a case-by-case basis, including whether the delay is 
unwarranted or prejudicial. The Office also will consider that impact 
when deciding whether to grant a motion for additional discovery based 
on a real party-in-interest or privity issue. The Office plans to add 
further discussion on this issue to the Office Patent Trial Practice 
Guide.
    Comment 2: A few comments suggested that the rules should be 
revised to require both parties to provide certain documents associated 
with the real party-in-interest or privity of the parties. In 
particular, the comments recommended requiring the parties to provide 
the following information: (1) Joint defense group agreements, (2) 
indemnity agreements, (3) identification of counsel representing a 
defendant in related litigations, (4) identification of parties 
participating in the preparation of the petition or in the review, and 
(5) identification of all parties funding the expenses associated with 
the review. In contrast, another comment urged the Office not to impose 
such burdensome mandatory disclosure requirements and indicated that 
the Office's current practice is appropriate for resolving real party-
in-interest and privity issues in a low-cost and efficient manner.
    Response: As many cases do not involve real party-in-interest or 
privity disputes, the Office, at this time, does not believe that any 
benefit resulting from requiring the parties to provide these highly 
sensitive, and possibly privileged, documents in every case would 
outweigh the additional cost and burden on the parties and the Office. 
When a patent owner timely raises real party-in-interest or privity 
challenges, which are highly fact dependent, the Office will continue 
to consider the need for additional discovery on a case-by-case basis, 
taking into account the specific facts in the proceeding to determine 
whether additional discovery is necessary in the interest of justice, 
in an inter partes review, or supported by a good cause showing, in a 
post-grant review. See, e.g., 37 CFR 42.51(b)(2); Garmin, Case IPR2012-
00001, slip op. at 7; Office Patent Trial Practice Guide, 77 FR at 
48760; Unified Patents, Inc. v. Dragon Intellectual Prop., LLC, Case 
IPR2014-01252 (PTAB Feb. 12, 2015) (Paper 37) (A non-party does not 
become a real party-in-interest or privy solely because it is a member 
of a trade association or joint defense group.). The Office also 
encourages the parties to confer on the issue of additional discovery 
early in the proceeding, and attempt to reach an agreement on a 
reasonable amount of information to exchange, so that the issue may be 
resolved promptly and efficiently. See 37 CFR 42.51(b)(2) (``The 
parties may agree to additional discovery between themselves.'').
    Comment 3: A few comments suggested that patent owners should be 
able to discover information concerning a real party-in-interest freely 
at any time. In contrast, several other comments urged the Office to 
limit discovery to that which is truly necessary, by applying the 
statutory standards for additional discovery.
    Response: As discussed above, the Office generally will permit a 
patent owner to raise a challenge regarding a real party-in-interest or 
privity at any time during a proceeding. The scope of discovery in AIA 
proceedings, however, differs significantly from the scope of discovery 
available under the Federal Rules of Civil Procedure in district court 
proceedings. Because Congress intended AIA proceedings to be a quick 
and cost-effective alternative to litigation, the statute provides only 
limited discovery in trial proceedings before the Office. See 35 U.S.C. 
316(a)(5) and 326(a)(5); 37 CFR 42.51(b)(2) and 42.224. Under the 
current practice--applying these statutory standards--the Office 
frequently has granted discovery requests directed to real-party-in-
interest or privity information, where the requests were specific, 
narrowly tailored, and not unduly burdensome. See, e.g., Arris Group, 
Inc. v. C-Cation Techs., LLC, Case IPR2015-00635 (PTAB May 1, 2015) 
(Paper 10) (informative); Zerto, Inc. v. EMC Corp., Case IPR2014-01254 
(PTAB Nov. 25, 2014) (Paper 15); Gen. Elec. Co. v. Transdata, Inc., 
Case IPR2014-01380 (PTAB Nov. 12, 2014); Medtronic, Inc. v. Robert 
Bosch Healthcare Sys., Inc., Case IPR2014-00488 (PTAB Nov. 5, 2014); 
Samsung Elects. Co. v. Black Hills Media, LLC, Case IPR2014-00717 (PTAB 
Oct. 2, 2014); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., 
Case IPR2013-00453 (PTAB Apr. 23, 2014) (Paper 40); RPX Corp. v. 
VirnetX Inc., Case IPR2014-00171 (PTAB Feb. 20, 2014) (Paper 33).
    Comment 4: One comment urged the Office to provide additional 
guidance regarding issues concerning real party-in-interest or privity, 
including specific questions and factors that petitioners should 
consider in determining what entities to identify, which would allow 
petitioners and patent owners to evaluate these issues early and in a 
more efficient manner.
    Response: The Office appreciates the interest in additional 
guidance on these complex issues. As the Supreme Court has instructed, 
however, whether an entity is a real party-in-interest is a highly fact 
dependent question that is not amenable to any bright-line test. Taylor 
v. Sturgell, 553 U.S. 880, 893-895 (2008). Whether a non-party is a 
real party-in-interest or privy for a trial proceeding before the 
Office is a highly fact dependent question that takes into account how 
courts generally have used the term to ``describe relationships and 
considerations sufficient to justify applying conventional principles 
of estoppel and preclusion.'' Office Patent Trial Practice Guide, 77 FR 
at 48759. The Office Patent Trial Practice Guide sets forth a detailed 
discussion on the relevant common law principles and Federal case law. 
Further helpful guidance is provided in recent Board decisions. See, 
e.g., Askeladden LLC v. Sean I. McGhie and Brian Buchheit, Case 
IPR2015-00122, slip op. at 3-16 (PTAB Mar. 6, 2015) (Paper 30); Zerto,

[[Page 50730]]

Inc. v. EMC Corp., Case IPR2014-01254, slip op. at 6-15 (PTAB Mar. 3, 
2015) (Paper 35); Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case 
IPR2014-01288, slip op. at 6-20 (PTAB Feb. 20, 2015); Unified Patents, 
Inc. v. Dragon Intellectual Prop., LLC, Case IPR2014-01252, slip op. at 
8-13 (PTAB Feb. 12, 2015) (Paper 37); GEA Process Eng'g, Inc. v. 
Steuben Foods, Inc., Case IPR2014-00041, slip op. at 3-26 (PTAB Dec. 
23, 2014) (Paper 140); Samsung Elecs. Co. v. Black Hills Media, LLC, 
Case IPR2014-00737, slip op. at 3-4 (PTAB Nov. 4, 2014) (Paper 7); 
First Data Corp. v. Cardsoft LLC, Case IPR2014-00715 (PTAB Oct. 17, 
2014); RPX Corp. v. VirnetX Inc., Case IPR2014-00171, slip op. at 6-10 
(PTAB July 14, 2014) (Paper 49); Alcon Research, Ltd. v. Dr. Joseph 
Neev, Case IPR2014-00217, slip op. at 6-7 (PTAB May 9, 2014) (Paper 
21); Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-
00606, slip op. at 3-12 (PTAB Mar. 20, 2014) (Paper 13). The Office 
plans to add further discussion on this issue to the Office Patent 
Trial Practice Guide.
    Comment 5: A few comments recommended that the Office establish a 
rule or precedential opinion stating that the existence of a real 
party-in-interest and privity are determined based on the facts in 
existence at the time of petition filing.
    Response: Limiting the inquiry to the time of petition filing would 
undercut the core functions underlying the requirement to name all real 
parties-in-interest and privies. Those core functions include 
resolution of conflicts of interest and ensuring the proper application 
of statutory estoppel provisions--concerns that persist throughout the 
course of an AIA trial proceeding. See 35 U.S.C. 315(e)(1) (real party-
in-interest or privy of the petition may not ``request or maintain'' a 
proceeding); 35 U.S.C. 325(e)(1) (same). As real party-in-interest and 
privity issues are highly fact dependent, in certain situations the 
issue may involve supporting evidence that comes into existence after 
the filing of a petition. See, e.g., GEA Process Eng'g, Inc. v. Steuben 
Foods, Inc., Case IPR2014-00041 (PTAB Dec. 23, 2014) (Paper 140, Public 
Version) (finding that a non-party who paid the Petitioner's legal fees 
for the inter partes review is a real party-in-interest, and rejecting 
the argument that post-filing funds cannot retroactively change the 
facts as of the filing date, because ``[t]ypically, legal bills are 
billed and paid for after the services have been rendered''). 
Therefore, such bright-line rules as suggested by the comments would 
not be in the interest of justice and are not adopted.
    Comment 6: A comment urged the Office to permit petitioners to 
correct the identification of real parties-in-interest without 
affecting the filing date if a ``good faith attempt'' was made to 
satisfy 35 U.S.C. 312(a).
    Response: The statute requires a petition to identify all real 
parties-in-interest without qualification. See 35 U.S.C. 312(a); see 37 
CFR 42.8 and 42.104. In the situation where the failure to identify a 
real party-in-interest was a mere clerical error, the petitioner may 
correct the petition without affecting the filing date. See, e.g., 37 
CFR 42.104(c); Coleman Cable, LLC v. Simon Nicholas Richmond, Case 
IPR2014-00935 (PTAB Aug. 28, 2014) (Paper 12). The Office is unable, 
however, to allow for the correction of any other such errors without 
changing the filing date because of the statutory requirement.
    Comment 7: A comment urged the Office to confirm that the 
petitioner bears the burden of producing evidence that it has standing, 
as well as the burden of persuasion on the issue.
    Response: As discussed previously, additional discovery may be 
authorized where patent owner raises sufficient concerns regarding the 
petitioner's identification of real parties-in-interest. Several recent 
decisions have acknowledged that the ultimate burden of proof on the 
issue lies with the petitioner. See, e.g., Askeladden, slip op. at 8 
(Paper 30); Zerto, slip op. at 6-7 (Paper 35); Atlanta Gas Light Co. v. 
Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 6-8 
(PTAB Jan. 6, 2015) (Paper 88); Atlanta Gas Light Co. v. Bennett 
Regulator Guards, Inc., Case IPR2013-00453, slip op. at 2-7 (PTAB Feb. 
23, 2015) (Paper 91). This allocation of the burden acknowledges that a 
petitioner is more likely than a patent owner to be in possession of, 
or have access to, evidence relevant to the issue. Zerto, slip op. at 
6-7. The Office plans to add further discussion on this issue to the 
Office Patent Trial Practice Guide.

Multiple Proceedings

    The Office asked a series of questions relating to how multiple 
proceedings, such as an AIA trial, reexamination, or reissue 
proceeding, before the Office involving the same patent should be 
coordinated, including whether one proceeding should be stayed, 
transferred, consolidated, or terminated in favor of another. The 
questions are replicated below, followed by the comments responsive to 
those questions and the Office's responses to the comments.
    Question 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? 79 FR at 36476.
    Comments: Multiple commenters recommended that the Board continue 
to exercise its discretion, on a case-by-case basis, to stay, transfer, 
consolidate, or terminate multiple proceedings involving the same 
patent claims. Several commenters urged the Board to consolidate 
multiple proceedings involving the same or related patents.
    Commenters urged the Board to manage multiple AIA proceedings by 
manipulating the dates for the patent owner's preliminary response. 
Several commenters suggested that the Board should delay the time 
period for filing the patent owner's preliminary response to a second 
petition, ``so as to effectively stay the filing of'' that response, 
until after the first-filed petition is resolved by termination or a 
final written decision. One commenter remarked that this effective stay 
of the time for filing the patent owner's preliminary response in a 
second proceeding is especially appropriate where the proceeding, 
instituted on the first-filed petition, is near completion.
    Another commenter proposed that, where a second petition is filed 
before the date on which the patent owner's preliminary response is 
filed in the first proceeding, the patent owner's preliminary response 
in the first proceeding should be reset to three months from the notice 
of filing date accorded the second petition. The commenter also urged 
that, under those circumstances, scheduling and briefing should be 
consolidated in the two proceedings. The same commenter proposed that 
the Board should stay all activity on a second petition that is filed 
after trial is instituted on a first petition.
    Several commenters proposed requiring petitioners, who file a 
petition challenging the same patent claims at issue in an earlier-
filed petition, to identify what issues were previously raised. 
Commenters also advocated requiring such petitioners to state whether 
they are amenable to joinder with the earlier proceeding. On that 
point, one commenter urged that duplicative petitions, filed after the 
deadline for joinder, ``should be terminated at an early stage to 
conserve Patent Owner costs and [Board] resources.'' Another commenter 
stated

[[Page 50731]]

that, ``[f]or consolidated AIA trials involving the same patent with at 
least one challenged claim in common, the current rules that the Board 
uses for joinder seem to be working well.'' Some commenters urged that 
duplicative petitions, filed outside the permissible period for 
joinder, should not be granted.
    Response: The current rules afford the Board broad discretion to 
manage multiple proceedings by tailoring the solution to the unique 
circumstances of each case and, thereby, optimizing efficiencies and 
promoting fair results in each case. See Prism Pharma Co. v. Choongwae 
Pharma Corp., IPR2014-00315 (PTAB July 8, 2014) (Paper 14) 
(informative) (denying institution of inter partes review based on 
second-filed petition that was based on the same prior art and same 
arguments previously considered by the Office during prosecution of the 
patent being challenged); Medtronic, Inc. v. Nuvasive, Inc., Case 
IPR2014-00487 (PTAB Sept. 11 2014) (Paper 8); Unified Patents, Inc. v. 
PersonalWeb Techs., LLC, Case IPR2014-00702 (PTAB July 24, 2014) (Paper 
13); Unilever, Inc. v. Procter & Gamble Co., Case IPR2014-00506 (PTAB 
July 7, 2014) (Paper 17); Medtronic, Inc. v. Robert Bosch Healthcare 
Systems, Inc., Case IPR2014-00436 (PTAB June 19, 2014) (Paper 17); 
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-
00324 (PTAB Nov. 21, 2013); ZTE Corp. v. ContentGuard Holdings, Inc., 
Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12). The Board will 
continue to take into account the interests of justice and fairness to 
both petitioners and patent owners where multiple proceedings involving 
the same patent claims are before the Office.
    The Board also must consider its ability to meet the statutory 
deadlines imposed by Congress on AIA trials. The Board agrees with the 
commenters that the timing of the patent owner's preliminary response 
may be altered, when helpful and fair in an appropriate case. No rule 
change is needed to accomplish that goal.
    The Board has considered the comment that second petitioners should 
self-identify repetitive challenges, and state their amenability to 
joinder. As a practical matter, the Board is well-positioned to 
determine whether a second petition raises the same or substantially 
the same challenges presented in a first petition that is identified as 
a related matter. The Board is also adept at determining whether a 
grant of the second petition, with joinder, serves the interests of 
fairness, efficiency, and economy of process. In addition, pursuant to 
37 CFR 42.8(b)(2), petitioners are required to identify other 
proceedings involving the same challenged patent, and petitioners are 
encouraged to identify any substantive similarities with other 
proceedings in the petition. No rule change requiring petitioners to 
self-identify repetitive challenges is warranted at this time.
    The Board agrees with the commenters that a factor which may be 
relevant in appropriate cases is whether the petitioner in a later-
filed proceeding is amenable to joinder with an earlier-filed 
proceeding involving the same patent claims. See, e.g., Motorola 
Mobility LLC v. Softview LLC, IPR2013-00257 (PTAB June 20, 2013) (Paper 
10) (order granting joinder where a second petitioner neither 
introduced new grounds of unpatentability nor raised procedural issues 
that would delay the schedule set for the first proceeding). The Board 
will continue to take account of all factors, bearing on the propriety 
and feasibility of joinder, based on the particular facts of the 
involved proceedings.
    Based on the comments, the Office determines that the current rules 
provide a workable framework for the Board to manage multiple 
proceedings that involve the same patent claims. No revision of the 
rules for managing such proceedings is necessary at this time.
    Question 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? 79 FR at 36,476.
    Comments: Some commenters suggested that the Office promulgate new 
rules that define the factors that the Office will take into account 
when considering multiple petitions directed to the same patent claims. 
Commenters advocated for the application of a variety of factors, which 
fall into three main categories: (1) The impact on scheduling and the 
Office's ability to meet the deadlines imposed by Congress in AIA 
proceedings; (2) prejudice to the patent owner; and (3) prejudice to 
the petitioner.
    Response: The issues raised by Question 8 are closely related to 
the issues raised by Question 7. The interests of fairness, speed, 
efficiency, and economy are served by retaining the Office's ability to 
balance the competing interests of the petitioner and patent owner, 
where multiple petitions are filed that challenge the same patent 
claims. Managing multiple petitions demands highly fact-specific 
inquiries, and the Office requires broad discretion to craft results 
that are tailored to the particular circumstances presented in each 
case. The Office agrees with the comments that recognize the issues 
raised by multiple petitions are best resolved on a case-by-case basis.
    The Office recognizes that approaching each case on its own facts 
raises consistency concerns that could be ameliorated by identifying a 
set of factors that apply in all cases. The Office agrees with the 
comments, however, suggesting that the interests, which bear on the 
propriety of a stay, transfer, consolidation, or termination where 
multiple proceedings are directed to the same patent claims, are best 
served by allowing the constellation of relevant factors to evolve 
gradually, tethered to the facts of individual cases. A restrained 
evolution, on a case-by-case basis, promotes fair and rational results 
in each case, and equips the Office with necessary flexibility to 
customize resolutions suitable for each particular case. The Office 
will develop relevant factors, tethered to specific facts raised in 
particular cases, through its body of case law. Given the still-
evolving nature of AIA proceedings, the Office believes that this 
gradual approach is prudent and preferred over a premature attempt to 
establish a rule or factors divorced from particular facts raised in a 
particular case, which may not address the relevant concerns in every 
case. The Office plans to add further discussion on this issue to the 
Office Patent Trial Practice Guide.
    Question 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? 79 FR at 36476.
    Comments: The Office received comments in favor of staying a 
copending reissue or reexamination. Commenters proposed that a stay for 
copending proceedings be determined on a case-by-case basis, with other 
commenters proposing that the stay be imposed upon institution of trial 
on the same patent. Another commenter proposed that a copending reissue 
or reexamination be stayed automatically, unless there was a showing of 
``good cause,'' which includes factors such as avoiding: (a) 
Inconsistent decisions by the Office; (b) duplicative work for the 
Board; and (c) disruption to the trial schedule. Other factors to 
consider in granting a stay, according to another commenter, include 
the statutory deadlines of the proceeding, the issues raised in the 
multiple proceedings, the parties involved, the likelihood of a reissue 
application being granted, and whether the decision adversely affects a 
party's ability to reach a timely

[[Page 50732]]

conclusion on a patentability issue. Another commenter provided 
additional factors to consider in granting a stay, such as the stage 
where amendments are possible, whether claim construction is 
inconsistent with the claim construction applied during trial, and 
agreement of the parties regarding a stay.
    For those commenters favoring a stay, the circumstances regarding 
when a stay should be lifted ranged from the rendering of a final 
written decision to when appeal to the Federal Circuit has been 
exhausted. Other commenters have requested that the Office clarify that 
it will not terminate the reexamination or reissue once the final 
written decision issues, so that a patent owner may pursue claim 
amendments in those proceedings.
    In the circumstances when a copending reexamination or reissue is 
not stayed and when there is no overlap of claims involved in the 
copending proceedings and the instituted trial, a commenter stated that 
the Office should preclude the presentation of new amended claims in 
the copending proceedings involving the same patent because a 
``sequential,'' rather than a ``simultaneous,'' evaluation of the 
claims is consistent with the legislative history of the AIA.
    Other commenters proposed that the Office consider allowing the 
reexamination and reissue to continue in parallel with or before the 
instituted trial. One commenter stressed that the purpose of a reissue 
is to correct errors, and therefore the remedial nature of the 
proceeding counsels against waiting for a trial to conclude. The same 
commenter offered that staying a reexamination is unjust to the patent 
owner because reexaminations are given ``special dispatch'' under 35 
U.S.C. 305, a statutory requirement that remained unchanged with the 
passage of the AIA. Because in an instituted trial only one amendment 
is allowed by motion, the same commenter stated that a stay would 
preclude examination of claims amended in a reexamination or reissue to 
address the newly cited prior art or correct an error that was not 
present or addressed during the original examination of the patent. In 
particular, one commenter stressed that a reexamination should be 
allowed to run its course, and in any event, because an AIA proceeding 
would replace reexamination, copending AIA and reexamination would not 
be a problem much longer.
    In the event a reexamination is not stayed, one commenter suggested 
that the Board's claim construction should be applied in the 
reexamination, or briefing on claim construction for the reexamination 
should be allowed in light of the claim construction involved in the 
trial.
    Response: The Office has been determining whether to stay a 
reexamination or reissue on a case-by-case basis, and agrees with the 
commenters advocating that various factors should be considered, 
including the overlap of issues presented in the copending proceeding 
and the stage of the copending proceeding to avoid duplicative work for 
the Office. See, e.g., Kaiser Aluminum v. Constellium Rolled Prods. 
Ravenswood, LLC, IPR2014-01002 (PTAB Feb. 19, 2015) (Paper 25) (denying 
request to stay a reexamination on the same patent and some of the same 
references because the proceeding involved evidence different from the 
evidence presented in the inter partes review (IPR) and the 
reexamination was not sufficiently underway such that it would conclude 
before a final decision would issue in the IPR); Chicago Mercantile 
Exch., Inc. v. 5th Market, Inc., CBM2014-00114 (PTAB Jan. 9, 2015) 
(Paper 20) (denying request to stay copending reexamination because 
claims amended in reexamination were not at issue in the instituted 
covered business method review, where Patent Owner did not file a 
motion to amend, and finding that parallel proceedings would not result 
in duplication of efforts at the Office because the instant proceedings 
did not involve a complete overlap of claims); Geortek, Inc. v. Knowles 
Elecs., LLC, IPR2013-00614 (PTAB Nov. 13, 2013) (Paper 11) (granting 
Patent Owner's motion to stay copending reexamination that had been 
ongoing for three years where Patent Owner argued that stay would 
prevent inconsistent results with regard to potential amendments of the 
same claims challenged in the inter partes review); Google, Inc. v. 
Grandeye, Ltd., IPR2013-00548 (PTAB Sept. 30, 2013) (Paper 7) (granting 
unopposed motion to stay copending reexamination by Patent Owner 
because concurrent proceedings would duplicate efforts within the 
Office and could potentially result in inconsistencies among the 
proceedings, especially in light of amendments of the challenged claims 
in the reexamination).
    The Office is not proposing changes at this time to the Rules or to 
the Office Patent Trial Practice Guide to give guidance regarding the 
timing on lifting a stay or how to proceed in a copending reexamination 
or reissue that is not stayed. These determinations have been 
proceeding appropriately on a case-by-case basis, noting, among many 
factors, the impact of the concurrent reexamination on the trial and 
whether the trial has concluded. See, e.g., GEA Process Eng'g, Inc. v. 
Steuben Foods, Inc., IPR2014-00043 (PTAB Feb. 19, 2015) (Paper 121) 
(ordering lift of stay of a copending reexamination after the trial was 
terminated and timing for filing a request for rehearing had expired, 
and ordering that Patent Owner provide a copy of the Decision on 
Institution to the Central Reexamination Unit for consideration in 
light of alleged inconsistencies); Gnosis S.p.A. v. Merck & CIE, 
IPR2014-00117 (PTAB Feb. 5, 2015) (Paper 74) (ordering lift of stay of 
a copending reexamination after issue of a final written decision, and 
in consideration of the following: (1) The reexamination involved 
overlapping claims; (2) Patent Owner did not amend claims involved in 
inter partes review; (3) added claims were alleged to be narrower in 
scope; and (3) Examiner in the reexamination had issued a final 
rejection); Avaya Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-
00071, slip op. at 31-32 (PTAB May 22, 2014) (Paper 103) (lifting stay, 
sua sponte and after final written decision issued, of a reexamination 
involving a non-asserted claim and different prior art presented in the 
inter partes review).
    The Office will continue to determine, on the facts of each case in 
which there is a copending reexamination or reissue, whether a stay is 
warranted or a stay should be lifted under the circumstances of each 
case.
    Question 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? 79 FR at 36476.
    Comments: The Office received comments in favor of not staying AIA 
trials in favor of a copending reexamination or reissue. One reason 
provided for not staying the trial is that statutory deadlines apply to 
the trials. One commenter observed an exception that may warrant a stay 
of AIA proceedings, i.e., to account for when the copending 
reexamination or reissue was not stayed and a new claim is about to 
issue. In that circumstance, the commenter suggested that a limited 
stay should be granted to allow a petitioner to raise the new claim in 
the pending trial. Another commenter also stated that limited 
circumstances may warrant a stay, such as when the copending 
reexamination is in the late stages of appeal and there is significant 
overlap in claims between the trial and the copending proceeding. This 
same commenter stressed that if the parties agree that patentability 
should be

[[Page 50733]]

determined first in the reexamination, a stay of the trial may be 
warranted.
    Other comments favored the request for and grant of a stay of the 
trial in favor of the copending reexamination or reissue. One commenter 
noted that such a stay should be granted when the copending 
reexamination or reissue is near completion, and another commenter 
stressed that the stay may be implemented before the trial is 
instituted such that the statutory deadlines are not impacted.
    Another commenter provided that denial of institution should result 
for grounds with claims that are at issue in a copending reexamination 
or reissue, where amended claims were filed in the copending proceeding 
before the deadline for the Board to determine institution. To clarify 
whether the Board would have jurisdiction over such a trial, the same 
commenter advocated revising the Office Patent Trial Practice Guide to 
include clarification regarding the timing on when a notice of intent 
to issue a reexamination certificate or notice of allowance of a 
reissue would be effective.
    Response: The Office will continue to proceed with the 
determination whether to institute trial on a case-by-case basis with 
no delay of the proceedings unless warranted by the facts or 
circumstances of the case. See, e.g., Intromedic Co., Ltd. v. Given 
Imaging Ltd., Case IPR2015-00579 (PTAB Aug. 5, 2015) (Paper 9) (denying 
institution of review because the only claim being challenged by 
Petitioner has been amended in the copending reexamination, and the 
advanced stage of the reexamination involving the same parties); 
Juniper Networks, Inc. v. Linex Techs., Inc., IPR2014-00595 (PTAB Sept. 
26, 2014) (Paper 19) (denying institution of inter partes review 
because a Reexamination Certificate in a copending reexamination had 
issued and reexamination had concluded with all original claims amended 
and new claims issued). The Office agrees with the commenters that 
stress that a statutory deadline does not favor staying trials in favor 
of a copending reexamination or reissue, which have no statutory 
deadlines. See, e.g., Mercedes-Benz USA, LLC v. Velocity Patent, LLC, 
IPR2015-00290 (PTAB Jan. 21, 2015) (Paper 9) (denying authorization for 
motion to stay inter partes review in favor of a copending 
reexamination because the argument that new claims would issue there 
first and inter partes review would be amended to include those claims 
were not sufficient reasons to lengthen the pendency of the inter 
partes review, which is designed to secure the just, speedy, and 
inexpensive resolution of the dispute); see also American Simmental 
Assn. v. Leachman Cattle of Co., LLC, PGR2015-00003 (PTAB Dec. 14, 
2014) (Paper 4) (denying request to stay institution of post-grant 
review (PGR) in favor of pending reissue because of the status of the 
PGR, Patent Owner had not sought amendment or cancellation of the 
claims challenged in the PGR, and the Office had not taken any 
substantive action on the reissue application).
    At this time, the Office does not propose changes to the Rules or 
the Trial Practice Guide to list specific circumstances under which a 
party may show that a stay of either a decision on institution or a 
trial may be appropriate. The Office will continue to decide motions to 
stay proceedings according to the facts and circumstances of each case.
    Question 11: Under what circumstances, if any, should a copending 
reexamination proceeding or reissue proceeding be consolidated with an 
AIA trial? 79 FR at 36477.
    Comments: The Board received several comments concerning the 
circumstances under which a copending reexamination or reissue should 
be consolidated with an AIA trial. Those circumstances fall roughly 
into two categories. The first category of comments indicated that 
consolidation of an AIA trial with copending reexaminations or reissues 
was impractical and that rules requiring such consolidation could, in 
some cases, prejudice patent owners. The second category of comments 
provided several factors that should be considered and weighed by the 
Board in determining whether to consolidate such proceedings. Those 
factors included: (1) Type of additional proceeding; (2) time between 
filing date of initial proceeding and additional proceeding; (3) stage 
of initial proceeding; (4) duration of additional proceeding; (5) scope 
of each proceeding; (6) third party filers (same, different); (7) 
relation between third party filer of additional proceeding and filer 
of initial proceeding; (8) number of total proceedings filed against 
the patent; (9) whether the additional proceeding is a reexamination: 
ex parte reexamination should not be transferred to PTAB because patent 
owner would lose certain procedural mechanisms such as ability to 
interview case; (10) whether pending district court litigation has been 
stayed pending resolution of the reexamination; (11) whether validity 
of claims at issue in AIA trial is currently on appeal to the Federal 
Circuit; (12) express interests of the parties in the proceedings; (13) 
issues raised in the different proceedings; (14) ability of Board to 
reach a timely conclusion of a patentability issue in any proceeding; 
and (15) saving of costs and resources gained by the parties and the 
Board by consolidation, for example, by coordination of procedures 
common to the proceedings.
    Response: The Office appreciates the comments and has been 
considering the above factors, among others, in deciding requests to 
consolidate a copending reexamination or reissue with AIA trials. See, 
e.g., Mercedes-Benz USA, LLC et al. v. Velocity Patent LLC, Case 
IPR2014-01247 (PTAB Dec. 15, 2014) (Paper 12) (denying Petitioner's 
request to file a motion to consolidate AIA trial proceeding with a 
related reexamination, where the only claims at issue in the AIA trial 
proceeding were added in the reexamination, and Patent Owner cancelled 
those claims in the reexamination); GEA Process Engineering, Inc. v. 
Steuben Food, Inc., Case IPR2014-00041, slip. op. at 3-5 (PTAB Dec. 6, 
2013) (Paper 13) (denying Petitioner's motion to consolidate AIA trial 
proceeding with a related reexamination, where Patent Owner stipulated 
to not amend claims in the related reexamination); GEA Process 
Engineering, Inc. v. Steuben Food, Inc., Case IPR2014-00051, slip. op. 
at 2-3 (PTAB Dec. 6, 2013) (Paper 12) (denying as moot Petitioner's 
motion to consolidate AIA trial proceeding with a related 
reexamination, where the reexamination had terminated and the 
reexamination certificate had issued). The Office agrees with the 
commenters who noted that there are many difficulties in consolidating 
copending reexaminations or reissues with AIA trials, and that all 
relevant factors, including but not limited to those set forth above, 
should be taken into consideration. The Office has performed similar 
analyses weighing a myriad of factors in analogous contexts, for 
example, in determining whether to stay a copending reexamination or 
reissue in favor of an AIA trial, or vice versa. See, e.g., Responses 
to Questions 9 and 10 set forth above.
    The Office does not propose to change the Rules or the portion of 
the Office Patent Trial Practice Guide pertaining to consolidation of a 
copending reexamination or reissue with AIA trials at this time. The 
Office will continue to determine on the facts of each case, in which 
consolidation is requested, whether a particular request sets forth 
facts sufficient to warrant consolidation of a copending reexamination 
or reissue with AIA trials.
    Question 12: How should consolidated proceedings be handled

[[Page 50734]]

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? 79 FR at 36477.
    Comments: The Office received comments suggesting ways in which 
consolidated proceedings should be conducted. Suggestions included: (1) 
Multiple AIA trials concerning the same (or related) patents (or 
parties) should be consolidated or handled by the same panel; (2) 
consolidated proceedings should follow the district court model with 
the same schedule applying to the proceedings; (3) a petitioner should 
be required to select a single lead and backup counsel, but taking into 
consideration the interests of the parties, in some circumstances the 
Board may determine coordination should not be required; and (4) panels 
should consider adjusting page limits in cases where different parties 
may be asserting different positions.
    Response: The Office agrees with the commenters that conducting 
consolidated proceedings in the manner set forth in the comments above 
may be appropriate. The Board has consolidated inter partes reviews 
involving the same parties and the same patent into a single proceeding 
where appropriate. See Ford Motor Co. v. TMC Fuels Injection System, 
LLC, Case IPR2014-00272 (PTAB Jun 26, 2014) (Paper 12) (consolidating 
IPR2014-00272, which was instituted on challenges under 35 U.S.C. 103, 
with IPR2014-00273, which was instituted on different challenges to the 
same claims under 35 U.S.C. 102 and 103 in which some of the applied 
references were common to both proceedings). In some cases where 
different parties have been joined to a proceeding, the panel has 
provided opportunities for limited additional briefing on issues where 
the petitioners may take different positions. See, e.g., Motorola 
Mobility LLC v. Softview LLC, Case IPR2013-00257 (PTAB June 20, 2013) 
(Paper 10) (joining proceeding to IPR2013-00004 and providing for 
consolidated filings and limited separate filings by Petitioners on 
points of disagreement only).
    The Office received a further comment that claim amendments should 
be allowed if an AIA trial is consolidated with a copending 
reexamination or reissue. The Office notes that claim amendments are 
available currently in all of these proceedings. Insofar as the 
commenter may be suggesting that all claim amendments be entered as a 
matter of right in a consolidated proceeding, the Office disagrees, and 
instead leaves entry of claim amendments to be determined by the panel 
conducting the consolidated proceeding in accordance with the statutory 
and regulatory framework applicable to each of the proceedings.
    Some commenters suggested that the Board has coordinated and should 
continue coordinating schedules of multiple related proceedings without 
formally consolidating the proceedings, for example, so as to allow 
different petitioners flexibility to pursue different arguments and to 
allow patent owner all of its allotted pages to respond to those 
different arguments. The Office has been coordinating schedules of 
multiple related proceedings without formally consolidating the 
proceedings, on a case-by-case basis, and agrees with the commenters 
that such practices should be continued, as appropriate. See, e.g., 
Taiwan Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-001089, 
slip. op. at 2-3 (PTAB Feb. 2, 2015) (Paper 17) (setting forth 
procedure for consolidated trial schedule, filings, and discovery in 
multiple related proceedings). The Board has also coordinated hearings 
in related cases and has scheduled hearings in related cases to occur 
on consecutive days in related cases. See Samsung Electronics Co., Ltd. 
v. Black Hills Media, LLC, Case IPR2014-00709 (PTAB Dec. 10, 2014) 
(summary of initial conference during which it was decided that 
IPR2014-00709, -00711, and -00718 would be heard together, IPR2014-
00737 and -00740 would be heard together, IPR2014-00718 and -00721 
would be heard together, and IPR2014-00717 and -00735 would be heard 
together, on consecutive days). See, e.g., Responses to Question 7 set 
forth above.
    The Office does not propose to change the Rules or the portion of 
the Office Patent Trial Practice Guide pertaining to handling of 
consolidated proceedings. The Office will continue to determine based 
on a case-by-case basis the proper manner in which such consolidated 
proceedings should be handled.
    Question 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? 79 FR at 36477.
    Comments: The Board received many comments in favor of denying AIA 
petitions that raise the same or substantially the same prior art or 
arguments that were raised in an earlier-filed petition, whether raised 
by the same or a different petitioner. One commenter stated that the 
Board ``should aggressively exercise'' its discretion to deny 
cumulative or overlapping grounds in multiple proceedings, ``even when 
different parties file petitions.'' Some commenters advocated denial of 
serial petitions filed by the same real party-in-interest. Other 
commenters stated that the Board should consolidate multiple petitions 
where feasible.
    Several commenters suggested a general policy of ``one and done'' 
to duplicative petitions, to prevent harassment of patent owners, 
minimize costs, and ensure quiet title of patent rights. Those same 
commenters also recommended that the citation of new art in a 
subsequent petition should create a rebuttable presumption that 
substantially the same prior art or arguments are not raised in that 
petition. Commenters also urged the Board to apply principles of 
redundancy, across different petitions, to deny duplicative grounds 
raised in later-filed petitions.
    Other commenters stated that ``[t]he Board should treat each 
petition independently,'' and that a different petitioner, not in 
privity with the first petitioner, should be permitted to raise the 
same prior art in a subsequent petition. Some commenters proposed that 
duplicative petitions should not be denied where arguments in a later-
filed petition differ in scope from those presented in an earlier-filed 
petition. Another commenter, by contrast, proposed a rule of 
``horizontal stare decisis'' that would require treating a first 
decision on patentability as ``binding law of the case'' in subsequent 
proceedings, challenging the same patent claims, based on the same or 
substantially the same prior art or arguments.
    Response: The Office has and will continue to balance the interests 
of petitioners, who seek to present new prior art and arguments in a 
later-filed petition, against patent owners' interest in preventing 
harassment that takes the form of repetitive, serial petitions that 
challenge the same patent claims. The Office is best able to balance 
those competing interests by approaching multiple petitions, which may 
raise the same or substantially the same prior art or arguments against 
the same patent claims, on a case-by-case basis, taking into account 
the unique facts and relative equities raised in each particular 
proceeding.
    The comments do not suggest a need for a rule change at this time. 
The current rules provide the Board with broad discretion adequate to 
take all

[[Page 50735]]

relevant factors into account, when deciding whether to proceed on a 
petition that challenges the same patent claims at issue in an earlier-
filed petition. Nor is a rule change necessary to enumerate the factors 
that the Board may take into account when making case-specific 
determinations, regarding the degree of overlap between the prior art 
and arguments raised in multiple petitions. The Office believes that 
the Board's current practice should continue to allow those factors to 
develop in its growing body of case law, tethered to the facts of 
particular proceedings, with such decisions of the Board providing 
guidance to practitioners.
    Issued decisions already provide useful guidance in that regard. 
The Board has considered many factors, including, for example: (1) The 
degree of overlap between the prior art and arguments raised in the 
multiple petitions; (2) the identity of the petitioner in the later-
filed proceeding; (3) whether the petitioner in the later-filed 
proceeding uses a prior decision on institution as a roadmap to refine 
and recycle arguments presented in an earlier-filed petition; (4) 
whether the circumstances surrounding the later-filed petition raises 
the specter of patent owner harassment; and (5) whether granting the 
later-filed petition is in the interests of justice. See, e.g., ZTE 
Corp. v. ContentGuard Holdings Inc., IPR2013-00454 (PTAB Sept. 25, 
2013) (Paper 12) (informative) (denying institution of inter partes 
review of a patent based on substantially the same prior art and same 
arguments presented previously in an earlier-filed petition filed by 
the same Petitioner for which institution was in-part denied, and 
citing 35 U.S.C. 325(d), to determine that ``[a] decision to institute 
review on some claims should not act as an entry ticket, and a how-to 
guide, for the same Petitioner who filed an unsuccessful joinder 
motion, and is outside of the one-year statutory period, for filing a 
second petition to challenge those claims which it unsuccessfully 
challenged in the first petition''); Medtronic, Inc. v Robert Bosch 
Healthcare Systems, Inc., IPR2014-00436 (PTAB June 19, 2014) (Paper 17) 
(informative) (denying institution of inter partes review where 
petition was based on redundant prior art and substantially the same 
arguments that were presented previously in an earlier-filed petition 
challenging the same patent and filed by a different Petitioner, but 
where the Petitioner in the later-filed case acknowledged that it was a 
real party-in-interest in the earlier-filed proceeding, due to its 
acquisition of the Petitioner in the earlier-filed proceeding); 
Unilever v. Procter & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) 
(Paper 17) (informative) (denying institution of inter partes review 
based on a later-filed petition, filed by same Petitioner and on same 
patent as an earlier-filed petition, where the later-filed petition 
attempted to correct deficiencies in the earlier-filed petition for 
claims for which earlier trial was not instituted); Dell Inc. v. 
Electronics and Telecomms. Res. Inst., Case IPR2015-00549 (PTAB March 
26, 2015) (Paper 10); Zimmer Holdings, Inc. v. Bonutti Skeletal 
Innovations LLC, Case IPR2014-01080 (PTAB Oct. 31, 2014) (Paper 17); 
Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 
(PTAB July 8, 2014) (Paper 14).
    The Office recognizes that a ``one and done'' approach to multiple 
petitions may favor patent owners by diminishing the opportunity for 
harassment and ensuring some certainty for patent rights. In that 
regard, the Board already has applied its broad discretion to curtail 
multiple challenges against a patent as described above.
    The competing interests of fairness to petitioners and the public 
interest, however, favor retaining the Office's discretion to grant or 
deny multiple petitions, rather than imposing a rigid rule that would 
require denial and, in effect, bind all potential challengers to the 
outcome of a first-filed petition, regardless of the facts and equities 
that surround the filing of the subsequent petitions.
    The Office also acknowledges that petitioners may benefit from a 
``rebuttable presumption'' that would render inapplicable the 
provisions of section 325(d), where a subsequent petition raises even 
one prior art reference that was not raised in the first-filed 
petition. Such an approach, however, unfairly would provide petitioners 
a fail-safe mechanism for avoiding the provisions of the statute, by 
filing serial petitions that add a single new reference to support the 
same grounds raised in an earlier petition. Such an approach fails to 
take into account the unfairness, including the potential for 
harassment, to patent owners when ``substantially the same'' prior art 
is raised sequentially against the same patent claims. The Office's 
discretion to grant or deny subsequent petitions, by viewing all 
relevant circumstances as a whole, on a case-by-case basis, is 
preferable to setting down a rigid rule.
    Within the existing framework of the statute and rules, the Office 
has discretion to consider the relative scope of the challenges raised 
in multiple petitions. If a petition raises challenges that are based 
on the same or substantially the same prior art as a prior petition, 
but advances arguments of different scope, the Office has discretion to 
deny or grant the second petition based on the totality of facts 
presented in the case. A rule of ``horizontal stare decisis'' would, 
therefore, abolish the Board's discretion, especially where two cases 
do not present the same facts or identical considerations.
    The Office will to continue to apply the existing framework, based 
on discretion to customize a result based on the facts and equities of 
each case. No rule changes are indicated at this time.

Extension of One Year Period To Issue a Final Determination

    The Office asked, ``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?'' 79 FR at 36477.
    Comments: The Office received comments in favor of the current 
strict adherence to the one-year statutory period and advocating that 
the granting of extensions should be rare. Many of these commenters 
stated that the Office should ``continue to strive for completion of 
each trial in one year,'' the ``good cause'' bar should be very high, 
and extensions of the deadline should be ``rare'' and used only ``in 
the most extreme circumstances'' such as ``where unforeseen 
circumstances make it impossible to complete proceedings in a fair 
manner.'' These same commenters stressed that ``one of the most 
important benefits of [these proceedings]'' and ``a major driver in the 
widespread adoption of the AIA procedures'' is that the Office renders 
a decision within one year. The commenters warned about eviscerating 
these benefits by a ``systematic extension of the one-year period.''
    The Office also received comments advocating that the Office make 
more generous use of the option to extend the one-year statutory period 
under certain circumstances. For example, commenters proposed that an 
extension of the one-year deadline would be appropriate under the 
following circumstances: (1) ``where a comparative test(s) are deemed 
necessary;'' (2) where there is ``delay by the party not seeking the 
extension;'' (3) ``if there is a later-filed AIA proceeding on the same 
patent that will not reach a final decision until after the first 
proceeding is concluded;'' (4) ``where

[[Page 50736]]

additional discovery is sought . . . in regard to secondary 
considerations or real party in interest;'' (5) ``in situations in 
which more time is needed to consider amended claims;'' and (6) ``where 
an irreplaceable, key participant becomes unexpectedly unavailable.''
    Many commenters also suggested that an extension would be 
appropriate in complex cases ``in the interests of justness, fairness 
to the parties'' and ``to conduct a full and fair review of the 
record.'' The commenters described examples of complex cases as 
including: (1) ``where there is a complex situation with multiple 
proceedings;'' (2) when ``the [Patent] Owner is involved in multiple 
proceedings simultaneously;'' (3) ``when an invention is particularly 
complex;'' (3) ``where multiple AIA trials are consolidated or 
joined;'' (4) ``where there are a large number of parties involved;'' 
and (5) ``where the trial involves complicated discovery issues.''
    Response: The Office will continue to strive to meet the one-year 
statutory time period for trial. By striving to meet the one-year 
statutory time period in most cases, the Office safeguards a core 
function of the administrative process as a speedy alternative to 
district court litigation. The Office does not propose to change the 
rules pertaining to the one-year pendency from institution-to-decision 
to provide for specific circumstances under which ``good cause'' may be 
shown. The Board will continue to determine on the facts of each case, 
in which an extension is requested, whether a particular request sets 
forth facts sufficient to meet the ``good cause'' standard to extend 
the one-year statutory deadline to complete a trial. The Office 
proposes, however, to revise the Office Patent Trial Practice Guide to 
provide examples of instances in which an extension of the one-year 
statutory period may be warranted. These examples will not be an 
exclusive list.

Oral Hearing

    The Office asked, ``Under what circumstances, if any, should live 
testimony be permitted at the oral hearing? What changes, if any, 
should be made to the format of the oral hearing?'' 79 FR at 36477.
    Comment 1: Several commenters asked the Board to be more willing to 
permit live testimony of declarants. Some suggested that live testimony 
be considered when requested or when the issues turn on conflicting 
expert testimony. Others commented that live testimony is rarely needed 
in AIA trials and the format of oral hearings should not change. One 
party suggested establishing a reasonable time limit when live 
testimony is permitted.
    Response: The Office will continue its present practice of 
considering requests for oral hearings on a case-by-case basis. Thus 
far, the Office has authorized and granted one such motion requesting 
oral testimony. See K-40 Electronics, LLC v. Escort, Inc., Case 
IPR2013-00203 (PTAB May 21, 2014) (Paper 34). The Office does not 
expect that oral testimony will be required in every case where there 
is conflicting testimony. When requested by the parties, however, and 
where the panel believes oral testimony will be helpful in making a 
determination, the Office will permit oral testimony. The format for 
presenting live testimony is left to the discretion of the panel.
    Comment 2: Two commenters suggested that the Office should revise 
the definition of ``hearing'' or ``trial'' to clarify that live 
testimony at the final hearing is part of an AIA trial.
    Response: The current definition of what constitutes a trial is 
intended to establish an endpoint for the receipt of evidence. Thus, 
unless otherwise authorized, no new evidence can be presented at the 
final oral hearing, as that would create surprise and be unfair to the 
party against whom the evidence is being offered. However, in the case 
of oral testimony at the final hearing, it is understood, and the Board 
will make clear at the hearing, that the testimony is evidence that 
becomes part of the record.
    Comment 3: Several commenters suggested that the Office should 
alter its format for final oral hearings to allow each party to reserve 
time for a main and rebuttal argument.
    Response: The comment is not adopted. The current format of oral 
hearings and the availability of rebuttal arguments are dictated by 
burdens of proof. Consequently, the petitioner, who has the burden of 
proving the challenged claims unpatentable, is permitted to rebut the 
patent owner's opposing argument on that issue. Likewise, a patent 
owner who presents argument on a motion to amend at final hearing is 
permitted to rebut petitioner's opposing argument on that issue. 
Providing a rebuttal to patent owner, as a matter of right, on 
unpatentablilty would disadvantage the party with the burden of proof. 
The Board, however, has broad discretion to conduct final oral hearings 
in a manner that is in the interests of justice.
    Comment 4: A commenter requested that the Office clarify whether 
the parties are limited to presenting argument on issues specified in 
the oral hearing request.
    Response: The comment is adopted. The Office will provide guidance 
on this issue in the FAQs on the PTAB Trials Web site and in the Office 
Patent Trial Practice Guide.
    Comment 5: A commenter requested that the Office provide the 
parties with additional days to permit exchange and conference on 
demonstratives.
    Response: The comment is adopted. The Office's rules for oral 
hearings are proposed to be modified to require the exchange of 
demonstratives seven business days before the final hearing date.
    Comment 6: A commenter requested that the Office revise its 
guidelines on the nature of demonstrative exhibits at oral argument to 
make them more ``relaxed.''
    Response: The comment is not adopted. The guidelines on 
demonstrative exhibits are intended to prevent a party from 
supplementing the record with additional evidence and arguments after 
the period for presenting evidence has ended.
    Comment 7: One commenter suggested upgrading technology resources 
so that hearings can be held in regional offices.
    Response: Currently, the Office is planning to upgrade its ability 
to hold hearings in regional offices.
    Comment 8: One commenter suggested that hearing rooms be open at 
least 30 minutes before the scheduled hearing time to allow the parties 
to organize themselves and connect any equipment to be used during the 
hearing.
    Response: The current Office practice is to open PTAB hearing rooms 
to the parties and public 30 minutes before the hearing is scheduled to 
start. The Office will continue this practice.
    Comment 9: A commenter advocated allowing a recess during oral 
argument to confer with an expert when there is a question of specific 
claim construction.
    Response: The panel hearing a final argument will evaluate a 
party's request for a recess on a case-by-case basis.
    Comment 10: A commenter suggested that all judges of a proceeding 
be available for multiple session final arguments.
    Response: This comment is adopted in part. Sometimes several 
related cases having different assigned panels are heard at the same 
time in a multi-session hearing. The Office ensures that, absent 
extenuating circumstances, the panel members assigned to a particular 
case are present at the session when that case is heard. The Office 
also encourages the panel members assigned to the related cases to be 
present for all

[[Page 50737]]

the sessions. Occasionally a scheduling conflict prevents a panel 
member from attending a session in a related case.

General Topics

    The Office asked, ``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?'' 79 FR at 36477.
    Comment 1: Several comments suggested reduced filing fees for 
smaller businesses such as micro-entities and technology start-ups, 
especially those involved in litigation.
    Response: The Office does not adopt this proposal. The Office was 
not given authority to provide for small entity and micro-entity filing 
fee reduction for reviews under AIA. The current filing fee schedule, 
available at http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule, takes into account the costs and expenses 
for maintaining the operation of the Office, and in particular, the 
operation of the Board in conducting AIA proceedings.
    Comment 2: The Office received comments regarding the use of party 
confidential information produced under a protective order in parallel 
district court proceedings. Commenters expressed concern that such 
party confidential information may be submitted in an AIA proceeding by 
the opposing party where there is ``little incentive to . . . either 
limit the evidence to that which has a nexus to the challenged claims 
or to provide sufficient argument to maintain'' confidentiality. 
Commenters further suggested procedural safeguards whereby, prior to 
filing an opponent's confidential information, a party is required to: 
(1) Initiate a conference call with the Board; (2) identify the 
materials to be used; and (3) explain why there is a nexus between the 
evidence and the challenged claims. The same commenters recommended 
that, once the Board authorizes the filing of this evidence, the 
opponent be afforded an opportunity to explain why the evidence be 
maintained under seal.
    Additionally, some commenters suggested that Section 4(A)(i) and 
(ii) of the default protective order should be modified to place the 
burden on the party designating the information confidential to show 
good cause for maintaining the information under seal. Other commenters 
recommended that the default protective order be entered automatically, 
and that the parties request authorization to file a motion to modify 
the default protective order.
    Response: In promulgating the rules for the treatment of 
confidential information in an AIA proceeding, the Office attempted to 
strike the proper balance between protecting the discloser's 
confidential information and the rights of others to use that 
information. There is a strong public policy in favor of making 
information filed in an AIA proceeding open to the public, especially 
because the proceeding determines the patentability of claims in an 
issued patent and, therefore, affects the rights of the public. 
Nonetheless, if a party wishes the Board to consider truly sensitive 
information in making a patentability determination, the current rules 
provide a mechanism for the party to seek protection of that 
information from public disclosure by providing for motions to seal and 
the filing of a proposed protective order. 37 CFR 42.54.
    With respect to the specific situation identified by the commenters 
regarding the filing of an opponent's confidential information, the 
current rules provide mechanisms to maintain confidentiality of such 
information. For example, under Rule 42.14, information subject to a 
motion to seal is ``provisionally sealed on receipt of the motion and 
remain[s] so pending the outcome of the decision on the motion.'' 
Following the filing of the motion to seal, an opponent may contact the 
Board and raise concerns regarding the other party's motion and the 
confidentiality of the opponent's information while the information is 
provisionally sealed. Further, under Rule 42.54, if applicable, the 
Board may issue an order to protect a party or person from disclosing 
confidential information, including ``[f]orbidding the disclosure or 
discovery.'' Moreover, to the extent that confidential information may 
have been improperly filed, Rule 42.56 provides for the expungement of 
this information from the record.
    Additionally, a party need not wait for the filing of a motion to 
seal or proposed protective order to bring issues of confidentiality to 
the Board's attention. Parties are encouraged to discuss discovery 
matters, including the discovery of confidential information, early in 
proceedings to resolve potential disputes before these occur. These 
discovery matters include whether a protective order is necessary for 
the proceeding. The automatic entry of a protective order in every 
proceeding is not necessary, especially as the majority of evidence in 
these contested proceedings is non-confidential. Nevertheless, should 
the parties desire more or less protection than that provided by the 
default order in the Office Trial Practice Guide (Appendix B), the 
parties are always free to propose a stipulated protective order for 
consideration by the Board. The purpose of the default order is to 
encourage the parties to reach such agreements promptly, as lengthy 
disputes over complex protective order provisions are inconsistent with 
the legislative goal of providing a more efficient, less costly 
alternative to litigation. As always, if the parties are unable to come 
to agreement on any issue, the Board is available to provide guidance.
    In light of the above, the Office does not propose any rule change 
in response to these comments. However, the Office appreciates the 
comments directed to affording the ``opponent'' an opportunity to 
explain why the evidence is confidential and placing the burden on the 
designating party to show good cause in sealing the information. The 
Office agrees it is reasonable that the party designating information 
as confidential is in the better position of explaining that 
designation and bearing the burden of maintaining confidentiality. 
Accordingly, the Office will revise the protective order in the Office 
Trial Practice Guide to include language addressing this concern.
    Comment 3: Several commenters recommended the use of word count 
instead of page limits.
    Response: This comment is adopted for the petition, preliminary 
response, patent owner response, and petitioner's reply brief. For all 
other briefing, a page limitation will be maintained. This change will 
allow the Office to gain administrative efficiencies. For example, with 
the use of word counts for the main briefing for AIA proceedings, 
petitions will no longer be reviewed to determine if any claim charts 
contain argument. This will streamline administrative review of 
petitions and reduce the number of non-compliant petitions that require 
correction.
    Comment 4: One comment suggested that a petition page limit should 
be determined by the number of claims challenged to avoid the filing of 
multiple petitions on a single patent. Another comment has favored an 
alternative approach that provides automatic page extension tied to 
excess claim fees.
    Response: This comment is not adopted. Based on the Board's 
experience, considering solely the number of claims at issue to 
determine a page limit for a petition does not provide sufficient 
flexibility in a petition to present ``the precise relief requested'' 
and ``the reasons for the relief requested, including a detailed

[[Page 50738]]

explanation of the significance of the evidence including material 
facts, and the governing law, rules, and precedent'' as required under 
Rule 42.22(a). Although, the number of claims at issue may affect the 
length of a petition, more often, the page length is governed by the 
discussion of the substantive unpatentability issues presented. In the 
Board's experience, the substantive issues for multiple claims in the 
same patent involve similar discussions of technology, claim 
construction, and prior art references. The Office expects that the 
word limits for inter partes review petitions, covered business method 
patent review petitions, and post-grant review petitions will be 
sufficient in all but exceptional cases. Furthermore, petitioners may 
seek waiver of the word limits in appropriate circumstances. 37 CFR 
42.24(a)(2).
    Comment 5: The Office received several comments regarding the use 
of claim charts. One commenter suggested claim charts should be 
attached separately from a petition and should not count toward the 
page limit. Other commenters requested clarification on the permitted 
contents in claim charts. For example, one commenter suggests that 
claim charts only include quotations from and citations to the prior 
art. Another commenter suggested allowing citations to declarations in 
the claim chart to support arguments as long as the declaration does 
not ``bootstrap arguments not also presented in the briefing.''
    Response: In considering the use of claim charts, the Office has 
always been mindful of the concerns that claim charts may be used 
improperly by parties to circumvent page limits. Indeed, claim charts 
have been improperly used by parties to present attorney arguments and 
the incorporation by reference of evidence and arguments (e.g., copious 
citations to declarations) that would otherwise exceed the page limits 
if provided elsewhere in briefing. As explained in the Board's 
frequently asked questions, D12, ``[p]lacing one's argument and claim 
construction in a claim chart to circumvent the double spacing 
requirement is not permitted, and any such argument or claim 
construction may not be considered by the Board.'' Further, D12 
explains the ``Board previously accepted a few petitions with claim 
charts that included claim constructions, arguments, and explanations 
as to how the claim is unpatentable because the procedure for filing 
AIA petitions was new. However, correction is now required when a 
petition includes improper usage of claim charts.'' With the advent of 
the change from page limits to word count for the petition, patent 
owner preliminary response, patent owner response, and reply brief, 
however, a party could present its case by including argument in claim 
charts.
    Comment 6: Several comments proposed allowing petitioners to file a 
reply brief responsive to the patent owner's preliminary response. 
Commenters suggest that the ability to file a reply brief will provide 
a more complete record, reduce the burden on the Office, and reduce the 
number of requests for rehearing filed by petitioners. Another comment, 
however, contends this proposed practice at the preliminary stage of 
the review would afford petitioners an unfair advantage in including 
arguments in the reply not addressed in the petition.
    Response: The Office does not adopt the proposal of a petitioner's 
reply as of right in the pre-institution phase of an AIA review. Adding 
a reply as of right to the record at the preliminary stage would 
increase the burden on Office review by introducing additional 
arguments into the record not presented in the petition, which is the 
focus of the institution decision. Further, under Rule 42.5 the Office 
exercises discretion in administering the proceedings to balance the 
ideal of precise rules against the need for flexibility to achieve 
reasonably fast, inexpensive, and fair proceedings. Accordingly, the 
Board will continue to consider a petitioners' requests for filing 
reply briefs on a case-by-case basis, such as in response to 
testimonial evidence submitted by a patent owner in its preliminary 
response.
    Comment 7: Several comments proposed increased page limits for the 
petitioner's reply to patent owner's response. Other comments suggested 
allowing patent owners to file a surreply to the petitioner's reply to 
patent owner's response addressing new issues that appear in replies. 
Another comment proposed replacing the motion for observations with a 
surreply.
    Response: The Office has recently issued rules that adopt the 
proposed change for increasing the page limit of the petitioner's reply 
to twenty-five (25) pages. The Office does not adopt the other proposed 
changes regarding surreplies. The Office Patent Trial Practice Guide 
provides that ``a reply that raises a new issue or belatedly presents 
evidence will not be considered and may be returned.'' Thus, a surreply 
is not required to address new issues raised in a petitioner's reply 
because such new issues are not considered by the Board.
    Comment 8: Several comments advised against implementing mandatory 
settlement discussions that impact the statutory timeline for AIA 
proceedings. Other comments agreed with the Board's approach of 
encouraging but not requiring settlement discussions. Further comments 
advised that additional Board resources should not be expended on 
promoting settlement. Additionally, other commenters disagreed on 
whether a proceeding should be terminated following settlement.
    Response: The Office agrees with comments recommending the 
encouragement of settlement and often includes a meet-and-confer 
requirement in a Scheduling Order. Additionally, the Office notes that 
the extent of the Board's involvement in settlement discussions, if 
any, will be determined on a case-by-case basis, especially where the 
parties request such involvement.
    With respect to the issue of termination following settlement, 
current Rule 42.74 provides the Board with discretion to determine 
issues of unpatentability after a settlement in a proceeding. In the 
Board's experience, this rule allows the Board greater flexibility to 
balance the public interest in resolving issues of unpatentability with 
the need to efficiently allocate Board resources. Thus, the Office does 
not adopt any rule change.
    Comment 9: The Office received a number of comments suggesting that 
the Board designate more decisions as precedential or informative to 
improve consistency of Board decisions, although one commenter 
suggested that the Office should not announce policy changes 
inferentially, for example, by selectively publishing decisions as 
informative. One commenter suggested the assignment of an assistant 
chief judge to identify precedential and informative decisions, and the 
promulgation of a rule-based designation process. Another commenter 
advocated revising SOP 2 to streamline the designation process.
    Response: The Office does not adopt these changes. Standard 
Operating Procedure 2 (rev. 9) (``SOP 2'') provides that any member of 
the Board may recommend to the Chief Judge that an opinion be 
designated as precedential or informative. This procedure ensures that 
all members of the Board, and not just an assigned member, have the 
opportunity to nominate a case of which others may not be aware. 
Further, SOP 2 provides that parties to a proceeding or a third party 
member of the public may, within 60 days of issuance of an opinion, 
request that the opinion be

[[Page 50739]]

made precedential. This procedure further engages stakeholders in the 
process of maintaining consistency at the Board by bringing cases of 
interest to stakeholders to the Board's attention. Additionally, the 
Office does not adopt a rule-based approach given that SOP 2 provides 
clear and sufficient guidance on the procedures taken at the Board for 
the designation of cases as informative or precedential.
    Also, in addition to the informative and precedential decisions, 
the Board further provides a list of representative orders and 
decisions at http://www.uspto.gov/patents-application-process/appealing-patent-decisions/decisions-and-opinions/representative-orders. Although not informative or precedential, representative orders 
and decisions provide guidance on the Board's treatment of recurring 
issues in AIA proceedings. See Standard Operating Procedure 2 (Rev. 9) 
(explaining distinction between routine, representative, informative, 
and precedential), http://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-9-22-2014.pdf.
    Comment 10: One commenter suggested that the Office Patent Trial 
Practice Guide should be updated periodically.
    Response: The Office is currently working on a revised Office 
Patent Trial Practice Guide that will be published with the final 
rulemaking for these proposed rules. The Office further expects 
revisions to the Office Patent Trial Practice Guide will be issued as 
needed in the future.
    Comment 11: Several commenters advocated improvements to the 
Board's Web site and docketing case system. Suggestions included the 
integration of the PTAB docketing system with Patent Application 
Information Retrieval (``PAIR''), improvements to Patent Review 
Processing System (``PRPS'') searching capabilities and user interface, 
and increased availability of statistics concerning AIA proceedings. 
One commenter suggested that all final written decisions should be 
uploaded into PAIR.
    Response: The Office has considered the commenters' suggestions and 
is working with vendors to improve PRPS and provide additional 
functionality such as searching in the case docketing system. With 
respect to integration with PAIR, after the issuance of a final written 
decision in an AIA proceeding, the final written decision also is 
uploaded into PAIR. In the Office's experience, this provides 
sufficient continuity of information between PRPS and PAIR. 
Additionally, the Office posts all final Board decisions to the 
Office's eFOIA site at http://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp, and has endeavored to maintain up-to-date and 
archived statistics on AIA proceedings, available at http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/statistics. Thus, at this time no changes to the availability of 
statistics or the underlying data are adopted.
    Comment 12: Several commenters expressed concern about the Office's 
practice of allowing institution based on some, but not all, of the 
grounds presented in a Petition. Commenters are concerned that because 
the decision on institution is not appealable, and any ground on a 
challenged claim that is not instituted is not reflected in the final, 
appealable decision, a petitioner has no redress for grounds on which 
the Office chooses to not institute. Also, one commenter suggested, 
allowing claim amendments for any ``challenged'' patent claim as 
contemplated by the AIA would be at odds with a practice where all 
challenged claims may not be in a trial. A commenter suggested shifting 
the redundancy determination to the final written decision, so that 
such a decision is appealable. One commenter stated that redundancy 
should not be applied where grounds are in different statutory classes, 
or when a reference can be sworn behind. Another commenter suggested 
requiring patent owner to submit a claim construction at the 
preliminary stage so that the Office could render a definitive 
construction in its decision on institution, subject to broadening in 
view of claim construction opinions in concurrent litigation, and avoid 
redundancy determinations between grounds under sections 102 and 103, 
that may prove during trial to be unduly constraining.
    Response: The Office appreciates the concerns expressed by the 
comments, but must balance these concerns with the workload in AIA 
proceedings and the statutory time constraints under which AIA review 
proceeding must be decided. In order to ensure a fair and efficient 
process to resolve reviews in a timely fashion, the Office uses partial 
institution as one tool to manage effectively AIA reviews. The Office 
is cognizant of the ramifications of partial institution where the 
grounds are in different statutory classes, or when a reference may be 
overcome by swearing behind it, and strives to strike an appropriate 
balance between what can be accomplished during the finite time frame 
for a trial and fairness to the parties in fully vetting patentability 
issues on challenged claims. The Office will continue to assess whether 
such balance is appropriately struck.
    Comment 13: One commenter suggested that the scope of estoppel 
under 37 CFR 42.73(d)(3) is too broad because it encompasses a finally 
refused or cancelled claim of a patent owner in an AIA review as prior 
art to be used against the patent owner, and may not allow a patent 
owner to pursue narrower, patentably distinct claims in a separate 
reissue, reexamination, or continuing application. Another commenter 
requested that the Office should maintain its rules regarding patentee 
estoppel to prevent a patentee from seeking new, but patentably 
indistinct claims in another proceeding before the Office. Commenters 
also requested clarification of the estoppel rule to make clear that an 
estoppel does not arise where an amendment is proposed, but not 
granted.
    Response: The Office appreciates the comments, but does not propose 
any rule change in response. The rule that the comment addresses, 37 
CFR 42.73(d)(3), appropriately precludes an applicant or owner from 
obtaining a claim that is not patentably distinct from a finally 
refused or canceled claim.
    Comment 14: Several commenters were concerned with a panel's 
perceived reluctance to revisit a decision, whether on rehearing or on 
final written decision after institution. One commenter suggested that 
the Office should consider designating one Administrative Patent Judge 
(``APJ'') for the decision on institution and a panel of three APJs for 
the corresponding AIA trial because of a real or perceived challenge 
for panel members to remain impartial in conducting an AIA trial on the 
merits when they participated in the decision to institute the trial. 
The commenter further stated that having the same three APJs consider 
an incomplete, preliminary record to decide institution, and 
subsequently issuing a final written decision based on the complete 
trial record, creates an actual or perceived bias against the patent 
owner. Another commenter suggested that the panel that institutes 
should be different from the panel that makes a final decision on the 
merits because it would increase due process protections, reduce any 
bias or perception of bias, and more fully meet AIA requirements by 
avoiding any blurring of the distinction between the threshold standard 
for institution and the higher standard for a determination on the 
merits of patentability. Several commenters suggested that requests for 
rehearing should be freely allowed and an expanded panel of APJs should 
be used to have ``another set of eyes'' to

[[Page 50740]]

ensure that rehearing requests will be duly considered, with another 
commenter suggesting that a completely different panel of APJs should 
consider requests for rehearing. Another commenter suggested that the 
Office should clarify what types of decisions are appropriate for an 
expanded panel review. One commenter asked for a requirement that a 
party requesting rehearing should file a statement specifically 
identifying conflicting Board or court decisions. Another commenter 
suggested that a reply brief for a petitioner should be allowed before 
a decision on institution is made, rather than relying on the 
availability of a request for rehearing that has a deferential 
standard, because the panel that decided the original decision may be 
reluctant to revisit it.
    Response: The Office believes that the panel deciding whether to 
institute an AIA proceeding is not predisposed to rule in favor of any 
party, whether the petitioner or patent owner, and that each panel 
applies the appropriate legal standard to make a fair and unbiased 
decision based upon the evidence and arguments of record. In response 
to these comments and to explore gaining further efficiencies in AIA 
proceedings, however, the Office may seek, in a separate Request for 
Comments, comments on a proposed pilot program under which the 
determination of whether to institute an IPR will be made by a single 
APJ, with two additional APJs being assigned to the IPR if a trial is 
instituted. In that separate Request for Comments, the Office also may 
seek comments on any other issues relevant to fair and efficient 
decision making.
    The Office recently has revised SOP1 to describe situations in 
which an expanded panel may be utilized, where the decision to expand a 
panel is made on a case-by-case basis. In SOP1, the Office has included 
reasons that may warrant expansion of a panel. This guidance may be 
found on the Office's Web site at: http://www.uspto.gov/sites/default/files/documents/SOP1%20-%20Rev.%2014%202015-05-08.pdf. Also, a 
petitioner always has the ability to request that a panel authorize the 
filing of a reply brief at the preliminary stage. Although a petitioner 
is not afforded a reply brief as of right before institution, the 
Office has provided in these proposed rules an explicit provision 
affording an opportunity to seek permission to file a reply brief to 
respond to a preliminary response that presents testimonial evidence.
    A request for rehearing is an opportunity to address whether a 
panel misapprehended or overlooked a matter in rendering its opinion, 
which may include identification of conflicting Board or court 
decisions, but does not necessitate such a statement. See 37 CFR 
42.71(d). Requiring a moving party to identify all matters the party 
believes the Board misapprehended or overlooked, and the place where 
each matter was previously addressed in a motion, an opposition, or a 
reply is appropriate for a rehearing request. See id.
    Comment 15: Two commenters sought a more generous schedule for 
parties to conduct the trial and advocated a more proactive management 
of the trial by earlier rulings on interlocutory motions, such as 
motions to amend, claim construction disputes, and motions to exclude, 
to narrow the issues for trial.
    Response: Although there is discretion in how to schedule due dates 
for an AIA trial, the Office is cognizant of the constraints on parties 
to engage in and complete discovery in a timely manner. To that end, 
the standard Scheduling Order generally entered in each case allows the 
parties to stipulate to adjustment of deadlines for the filing of 
patent owner's response, petitioner's reply, briefing for any motion to 
amend, and briefing on any motions for observations and any motion to 
exclude except for the reply briefs for the motion to exclude (due 
dates 1 through 5). If a problem arises in meeting the schedule set 
forth by the Office on dates for which the parties may not stipulate to 
a change or on which the parties do not agree to a new date, the 
parties are encouraged to contact the Office to resolve the issue. The 
Office continues to review the AIA proceedings to assess where 
efficiencies may be gained for both the Office and the parties, but 
does not contemplate at this time requiring resolution of interlocutory 
motions at certain points in the trial timeline. As always, should any 
party believe that a particular motion in a case warrants early 
attention to resolve an issue that will truncate the proceeding, such 
party is invited to bring that issue to the attention of the Office in 
that case.
    Comment 16: One commenter suggested changing 37 CFR 42.20(c) to 
refer to both the burden of proof and persuasion, and to refer to the 
burden being placed on the ``petitioning or moving'' party, as opposed 
to ``moving party'' only.
    Response: The Office appreciates the comment, but declines to amend 
the rule.
    Comment 17: One commenter suggests that further training of APJs in 
the payments industry may be necessary for those working on covered 
business method patent reviews. Another commenter suggests that 37 CFR 
42.301(b) should be amended to reflect that both factors for 
determining a technological invention must not exist for a claim to be 
found to fail to define a ``technological invention.''
    Response: The Office appreciates these comments and continues to 
assess the training needs for employees. The Office declines to amend 
37 CFR 42.301(b) as it reflects properly the standard for determining 
whether a patent is for a technological invention.
    Comment 18: One commenter advocates application of an issue 
preclusion analysis in deciding whether to adopt a prior claim 
construction in another proceeding.
    Response: Although the Office considers prior claim constructions 
rendered in another proceeding, the Office is mindful that the Board 
follows a different claim construction approach than that of district 
courts, and the evidentiary record in the later AIA proceeding may be 
different than the one in the prior proceeding. Therefore, a strict 
issue preclusion analysis would not be appropriate for every case. The 
Office will determine the claim construction on a case-by-case basis 
depending on the facts presented in the particular proceeding.
    Comment 19: Several commenters had suggestions for deposition 
practice before the Office in AIA trials. One commenter suggested that 
37 CFR 42.53(d)(4) is too restrictive by requiring a notice of 
deposition to be filed at least 10 days before a deposition takes 
place, because in practice, parties often do not agree on the place and 
time of a deposition within this time frame. Another commenter asked 
for clarification concerning when counsel may object to a line of 
questioning in a deposition as beyond the scope of the witness's direct 
testimony. Two commenters requested clarification of 37 CFR 42.53(g) 
governing which party should bear the costs associated with the 
testimony of a witness. Another commenter seeks a blanket prohibition 
on a party's ability to confer with a witness during the deposition, 
especially between cross-examination and re-direct, which the commenter 
asserts encourages rehearsal of testimony for re-direct.
    Response: The Office appreciates these comments. The Office invites 
further comment on how to amend section 42.53(d)(4). For instance, 
should the rule be amended to reduce the amount of lead time for filing 
a notice of deposition before the deposition, allow the parties to 
stipulate to the timing for filing, or allow both options? Determining 
when a party's line of questioning in a deposition is beyond

[[Page 50741]]

the scope of the deposition is best handled on a case-by-case basis, 
and the Office is amenable to handling timely these issues as they 
arise in a deposition. The Office has provided guidance on which party 
should bear the costs associated with the testimony of a witness in the 
Office Patent Trial Practice Guide in discussing witness expenses 
associated with discovery. See 77 FR at 48761. The Office invites 
further comment on any additional clarification that is needed. The 
Office appreciates the comment concerning when a party may confer with 
its witness during a deposition, but believes that the guidance in the 
Office Patent Trial Practice Guide strikes the correct balance 
concerning when a party may confer with its witness.
    Comment 20: One commenter suggested that a patent owner be required 
to serve any evidence regarding authentication or public availability 
of a prior art reference on which trial has been instituted, concurrent 
with any objections the patent owner is making to the petitioner's 
evidence.
    Response: The Office appreciates the comment. The rules currently 
provide that unless previously served, a party must serve relevant 
information that is inconsistent with a position advanced by the party 
during the proceeding concurrent with the filing of the documents or 
things that contains the inconsistency. See 37 CFR 42.51(b)(1)(iii). 
Therefore, a patent owner advancing the position that evidence is not 
authentic or was not available publicly has an obligation to serve this 
information on the petitioner.
    Comment 21: To facilitate electronic filing, one commenter 
suggested that backup counsel's login credentials should be able to be 
used for filing documents and that service may be made to electronic 
mail addresses specified in the mandatory notices without requiring 
agreement of the parties.
    Response: The Office appreciates the suggestions and is working to 
improve its electronic filing and case management system. Parties are 
now permitted to identify one backup counsel who will have the same 
permissions as lead counsel and be permitted to file documents in the 
system. Parties may identify additional backup counsel, but only the 
lead counsel and first backup counsel may file documents. With respect 
to service under Sec.  42.6(e), the Office believes that the ability to 
serve electronically should remain optional upon agreement of the 
parties, rather than mandatory, to accommodate users who do not use 
electronic mail regularly or who prefer service by mail.
    Comment 22: Two commenters questioned how experts are utilized in 
AIA proceedings. One commenter favors significant sanctions for counsel 
to author a report that an expert signs without authorship. A second 
commenter seeks amendment of 37 CFR 42.65(a) to require that an 
unsupported expert report be entitled to ``no weight.''
    Response: The authority of the Office to sanction a party for 
misconduct, see 37 CFR 42.12, including abuse of process or any other 
improper use of the proceeding, is robust, and the Office proposes 
adding a Rule 11-type certification for all papers filed with the Board 
with a provision for sanctions for noncompliance that would apply to 
practitioners as well as parties. Therefore, the Office has the ability 
to sanction inappropriate conduct that is brought to its attention. The 
Office declines to amend 37 CFR 42.65(a) to require that an unsupported 
expert report must be entitled to ``no weight.''
    Comment 23: One commenter stated that an Office decision nullifying 
the claims of a patent or an affirmance of such a decision should 
operate to trigger the failure-to-market forfeiture provisions under 21 
U.S.C. 355(j)(5)(D)(i)(I).
    Response: The Office appreciates the comment, but as the commenter 
recognizes, such a request is beyond the Office's jurisdiction to 
accomplish.
    Comment 24: Several commenters expressed concern about the 
perception of overall fairness of AIA proceedings to both the 
petitioner and patent owner. For instance, several commenters expressed 
concern that the Office is more concerned with the speed and efficiency 
with which it handles AIA proceedings than with the perception of 
fairness of the proceedings to all involved parties. Several commenters 
expressed a perception that AIA proceedings are skewed in favor of 
petitioner.
    Response: The Office appreciates these comments and continues to 
actively engage with the public and practitioners who utilize AIA 
proceedings, as the Office has done with this notice of proposed 
rulemaking, to continually monitor the fairness of the proceedings for 
all involved parties, as well as examining ways to ensure that the 
process is as efficient and fair as possible under the congressional 
mandate. For instance, in the Office's ``Quick-Fix'' rulemaking, the 
Office provided for additional pages for briefing for motions to amend 
and the petitioner's reply brief and provided for a claims appendix. 
The Office has also issued further guidance on motions to amend through 
decisions, such as MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-
00040 (PTAB July 15, 2015) (Paper 42), and currently proposes allowing 
Patent Owners to present new testimonial evidence at the preliminary 
stage of the proceeding. The Office also is proposing a word count for 
major briefing to allow the parties to present arguments and evidence 
to the Office in a way that the party deems is most effective, and is 
proposing a Rule-11 type certification be applied to police the actions 
of counsel, as well as parties, in AIA proceedings. Based upon input 
from the public and experience with the proceedings, the Office will 
continue its efforts to make the proceedings as fair and effective as 
possible under congressional mandate.
    Comment 25: One commenter expressed concern over use of AIA 
proceedings by a second petitioner that uses prior art or arguments 
from a previously filed petition and expressed concerns about 
consistency in the joinder process. This commenter suggested assigning 
the second petitioner the role of junior party, who should not be 
allowed to continue the proceeding if the original petitioner and 
patent owner successfully settle the AIA proceeding.
    Response: The Office appreciates these comments, and notes that the 
Office has the discretion concerning whether to institute an AIA review 
and the authority to decline to institute where the same or 
substantially the same prior art or arguments were previously presented 
to the Office. See 35 U.S.C. 314(a), 315(d), 324(a), 325(d). Although 
the Office strives for consistency in the treatment of parties before 
the Office, the Office declines to adopt the suggestion to assign a 
second petitioner, asserting similar argument or prior art as a first 
petitioner, the role of ``junior party'' and to discontinue a 
proceeding if the original petitioner and the patent owner settle their 
dispute. The Office will not terminate a proceeding that has not been 
settled as to all parties because each party is entitled to assert its 
interest in the proceeding.
    Comment 26: Commenters suggested eliminating the proposed statement 
of material facts option in 37 CFR 42.22 and 42.23 because it is not 
used often and panels have differed as to whether such statements are 
counted in the page limits.
    Response: The Office appreciates this comment, but declines to 
adopt it in order to maintain the option of a party to choose to file a 
proposed statement of material facts. See 37 CFR 42.24

[[Page 50742]]

(including any statement of material facts to be admitted or denied in 
support of a petition or motion in the page limits).
    Comment 27: Several commenters expressed concern over the use of 
demonstrative exhibits. For instance, one commenter wanted the timing 
for exchanging demonstratives that allows parties to address objections 
and achieve resolution before the oral hearing. Another commenter seeks 
to be able to use argument in demonstratives with proper citation, and 
another commenter states that striking of demonstratives should be very 
rare and that problems with demonstratives should go to the weight to 
be accorded.
    Response: The Office appreciates the comments and understands the 
difficulty in resolving disputes concerning demonstrative exhibits. The 
Office believes, however, that the most efficient way to handle such 
disputes is on a case-by-case basis with the panel for the case.
    Comment 28: One commenter encourages the Office to continue 
outreach by roundtables and webinars.
    Response: This comment is adopted. The Office continues to host 
Board-side chats, road shows, and lunch-and-learn programs that will 
begin in the fall of 2015. The Office considers these interactive 
programs to provide valuable input into how to improve the fairness and 
effectiveness of the AIA proceedings.
    Comment 29: Two commenters ask that the patent owner's preliminary 
response be made mandatory for certain disclosures such as claim 
construction and antedating of references, which will merely shift the 
timeframe in which a patent owner must present such information and 
argument.
    Response: The Office appreciates this comment. In this proposed 
rulemaking, the Office proposes allowing a patent owner to present new 
testimonial evidence with the patent owner preliminary response, which 
may encourage patent owners to participate in the preliminary phase by 
filing such a response and addressing issues raised in the petition 
with argument and supporting evidence. The Office declines, however, to 
make a patent owner preliminary response mandatory in light of the 
statutory framework of AIA, which provides a patent owner a right to 
file a preliminary response. See 35 U.S.C. 313.
    Comment 30: One commenter requested that guidance in the Office 
Patent Trial Practice Guide that is not reflected in any rule, be 
incorporated into a rule, and that criteria for pro hac vice motions 
that are reflected in current case law be incorporated into a revised 
rule.
    Response: The Office appreciates these comments. The Federal 
Circuit recognizes that ``the choice between rulemaking and 
adjudication lies in the first instance within the agency's 
discretion.'' Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1291 (Fed. 
Cir. 2015) (citing NLRB v. Bell Aerospace Co. Div. of Textron, 416 U.S. 
267, 294 (1974)) (internal quotation marks omitted). At this time, an 
effective and efficient way to provide guidance to practitioners is 
through the Office Patent Trial Practice Guide and through 
adjudication--the development of case law that resolves specific issues 
in light of specific facts before the Office. The Office will continue 
to develop guidance through these avenues, as well as through 
rulemaking, where appropriate.
    Comment 31: Several comments addressed formatting for briefing in 
AIA proceedings. For instance, one commenter asks that the requirement 
that each page of an exhibit be uniquely numbered in sequence be 
amended to apply only if such page numbering does not exist already on 
the document to avoid confusion as to which numbering scheme is 
referenced in a brief. Another commenter asked that block quotes be 
single spaced, and that incorporation by reference be allowed at a 
panel's discretion when the same argument from another proceeding is 
applicable.
    Response: The Office appreciates the comments, but declines to 
adopt them. Rule 42.63(d)(2)(i) requires that each page of an exhibit 
must be uniquely numbered in sequence, but does not require a new set 
of unique numbers be applied to an exhibit for which unique numbers 
exist. The Office proposes using a word count for major briefing, which 
would negate any advantage for using single spacing for a block quote, 
and the Office requires 1.5 spaced block quotations for readability. 
See 37 CFR 42.6(a)(2)(iii). The Office declines to allow incorporation 
by reference at the panel's discretion because such incorporation may 
subvert the page or word limit and each proceeding should be self-
contained within the docket for that proceeding for efficiency and 
completeness.
    Comment 32: Another commenter suggested that the Office allow the 
parties to file papers, such as claim construction orders or other 
statements from co-pending litigation, as supplemental information.
    Response: The Office appreciates that claim construction orders and 
other papers from co-pending litigation could be helpful to resolve the 
parties' disputes in the proceeding before the Office in certain 
situations. From the Office's experience, petitioners had submitted 
such papers with their petitions to support their proposed claim 
constructions. Similarly, patent owners proffered district court's 
claim construction determinations with their preliminary responses or 
patent owner responses in support of their position on patentability. 
In fact, parties may file co-pending litigation papers to support their 
motions, oppositions, or replies. Parties also may seek leave to file a 
motion to submit supplemental information pursuant to Sec.  42.123, but 
such papers must be relevant to a claim for which the trial has been 
instituted.
    Comment 33: One commenter suggested a clarification in 37 CFR 
42.121(b)(1) to change the ``support in the original disclosure of the 
patent'' to the ``support in the original disclosure of the application 
from which the patent issued.''
    Response: The Office appreciates this comment, but does not adopt 
it as the rule, as applied, is clear.
    Comment 34: Several comments were directed to the treatment of sole 
inventors and small entities. One commenter asked for more guidance for 
independent inventors or small business who may want to utilize the AIA 
proceedings pro se. For instance, the commenter stated that AIA 
proceedings should be no more onerous than prosecution before the 
Office, should be affordable, fair, and accessible for smaller 
companies, and should be preferential to small entities and sole 
inventors, who spend a greater percentage of time and capital securing 
patents than larger entities.
    Response: The Office does not adopt these proposals. The Office was 
not given authority to provide for small entity and micro-entity filing 
fee reduction for reviews under AIA. The current filing fee schedule, 
available at http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule, takes into account the costs and expenses 
for maintaining the operation of the Office, and in particular, the 
operation of the Board in conducting AIA proceedings. The Office also 
provides guidance for AIA proceedings through its Office Patent Trial 
Practice Guide and on its Web site.
    Comment 35: One commenter suggested that the Office should 
encourage Congress to expand the scope of AIA proceedings by advocating 
that Congress include section 101 challenges in inter partes reviews, 
make covered business method patent reviews permanent, and expand 
covered

[[Page 50743]]

business method patent reviews to include a broader variety of patents.
    Response: The Office remains open to all ways of strengthening our 
patent system and appreciates the comment, and notes that these issues 
were considered by Congress during the legislative process for AIA.
    Comment 36: One commenter proposed that the Office amend Rule 
42.52(d)(2) to state that cross-examination should ordinarily take 
place after any supplemental evidence relating to the direct testimony 
has been served, as opposed to filed, because supplemental evidence is 
served under Rule 42.64(b)(2), and not filed until after a motion to 
exclude has been filed, which occurs well after most depositions have 
taken place. Another commenter suggests requiring filing of 
supplemental evidence as exhibits versus just serving.
    Response: The Office will adopt these comments and resolve the 
issue presented, but seeks further comment on the best way to resolve 
the issue. For instance, should the Office amend Rule 42.52(d)(2) as 
suggested or amend Rule 42.64(b)(2) to require that supplemental 
evidence be filed as opposed to served?
    Comment 37: Several commenters expressed views concerning the types 
of arguments to be made in AIA proceedings. For instance, one commenter 
suggested that the Office should distinguish between appropriate 
analysis and inappropriate ``argument'' in claim charts. A second 
commenter sought a limitation on the number of invalidity arguments. 
Another commenter wanted clarification of the rules that a patent owner 
is also under a burden to support affirmative factual statements with 
evidence.
    Response: The Office appreciates the comments. In the current 
proposed rule, the Office proposes to use a word count for major 
briefing, such as the petition, patent owner preliminary response, 
patent owner response, and petitioner's reply. A change from page 
limits to word count for major briefing allows the parties to structure 
arguments in briefing in any way that the party deems best for 
presenting its case to the Office, including presenting analysis and 
arguments in claim charts. Because the Office has the discretion under 
35 U.S.C. 314(a) and 324(a) whether to institute an AIA trial and takes 
the opportunity at institution to focus the trial on grounds which meet 
the threshold standards in 35 U.S.C. 314(a) and 324(a) and which 
reasonably may be decided within the statutory imposed time-frame for 
the trial, the Office declines to place a limitation on the number of 
grounds that a petitioner may present. Also, if patent owner does not 
support affirmative factual statements with evidence, such statements 
will be given little or no weight.

Rule 11-Type Certification

    To further attempt to prevent any misuse of the AIA proceedings, 
the Office proposes to amend Sec.  42.11, which prescribes the duty of 
candor owed to the Office, to include a Rule 11-type certification for 
all papers filed with the Board with a provision for sanctions for 
noncompliance. The Board also may refer possible misconduct in the 
course of AIA proceedings to the Office of Enrollment and Discipline 
for investigation and, if warranted, further proceedings under 37 CFR 
11.19-11.61.

Recognizing Privilege for Communications With Domestic Patent Agents 
and Foreign Patent Practitioners

    In 2015, the Office launched an outreach initiative to explore 
various issues associated with confidential communications with patent 
agents or foreign patent practitioners. The Office published a notice 
convening a roundtable in February 2015 and requesting public comments. 
See Domestic and International Issues Related to Privileged 
Communications Between Patent Practitioners and Their Clients, 80 FR 
3953 (Jan. 26, 2015). Nineteen parties submitted written comments in 
response to the Federal Register notice, which are available on the 
USPTO Web site at: http://www.uspto.gov/learning-and-resources/ip-policy/roundtable-domestic-and-international-issues-related-privileged. 
Some of these comments raised the issue of unclear or inconsistent 
privilege rules for agents and foreign practitioners during discovery 
in PTAB proceedings.
    Consistent with that earlier outreach initiative, the Office here 
seeks comments on the subject of attorney-client privilege or other 
limitations on discovery in PTAB proceedings, including on whether 
rules regarding privilege should be issued in connection with PTAB 
proceedings. Such rules could, for example, explicitly recognize 
privilege for communications between patent applicants or owners and 
their domestic patent agents or foreign patent practitioners, under the 
same circumstances as such privilege is recognized for communications 
between applicants or owners and U.S. attorneys. The Office invites the 
public to provide any comments on language, scope, or other 
considerations for creating such a privilege, including possible 
amendments to any of 37 CFR 42.51, 42.52, 42.55, 42.62, or 42.64 to 
accomplish this purpose.

Discussion of Specific Rules

Subpart A--Trial Practice and Procedure

Claim Construction Standard

    The Office proposes to amend 37 CFR 42.100(b), 42.200(b), and 
42.300(b) as follows:
     Amend 37 CFR 42.100(b) to add the phrase ``that will not 
expire before a final written decision is issued'' after ``an unexpired 
patent.''
     Amend 37 CFR 42.200(b) to add the phrase ``that will not 
expire before a final written decision is issued'' after ``an unexpired 
patent.''
     Amend 37 CFR 42.300(b) to add the phrase ``that will not 
expire before a final written decision is issued'' after ``an unexpired 
patent.''
    The Office will add further clarifying instructions in the Office 
Patent Trial Practice Guide concerning how a petitioner may determine 
which standard to apply in the petition.

Patent Owner Preliminary Response

    The Office proposes to amend 37 CFR 42.107(a) to provide that the 
patent owner is not prohibited from including new testimonial evidence 
with a preliminary response and that the patent owner's preliminary 
response to the petition is subject to the word count under 37 CFR 
42.24. See the proposed text in the amendatory instructions below.
    The Office proposes to amend 37 CFR 42.107 to delete paragraph (c) 
so that the patent owner is not prohibited from including new 
testimonial evidence with a patent owner preliminary response.
    The Office proposes to revise 37 CFR 42.108(c) provide that the 
Board's decision whether to institute an inter partes review will take 
into account a patent owner preliminary response where such a response 
is filed, but supporting evidence concerning disputed material facts 
will be viewed in the light most favorable to the petitioner for 
purposes of deciding whether to institute an inter partes review, and 
that the petitioner may seek leave to file a reply to the preliminary 
response. See the proposed text in the amendatory instructions below.
    The Office proposes to revise 37 CFR 42.207(a) to provide that the 
patent owner is not prohibited from including new testimonial evidence 
with a preliminary response and that the patent owner's preliminary 
response to the petition is subject to the word count under 37 CFR 
42.24. See the proposed text in the amendatory instructions below.

[[Page 50744]]

    The Office proposes to amend 37 CFR 42.207 to delete paragraph (c) 
so that the patent owner is not prohibited from including new 
testimonial evidence with a patent owner preliminary response.
    The Office proposes to revise 37 CFR 42.208(c) provide that the 
Board's decision whether to institute a post-grant review will take 
into account a patent owner preliminary response where such a response 
is filed, but supporting evidence concerning disputed material facts 
will be viewed in the light most favorable to the petitioner for 
purposes of deciding whether to institute a post-grant review, and that 
the petitioner may seek leave to file a reply to the preliminary 
response. See the proposed text in the amendatory instructions below.

Oral Hearing

    The Office proposes to amend 37 CFR 42.70(b) to require at least 
seven, not just five, days before oral argument for exchange of 
exhibits to provide additional time for the parties to resolve disputes 
concerning demonstrative exhibits.

Word Count

    The Office proposes to amend 37 CFR 42.24 to implement a word count 
limitation for petitions, patent owner preliminary responses, patent 
owner responses, and petitioner's replies, by:
     Adding ``Type-volume or'' to the title;
     adding ``word counts or'' before the words ``page limits'' 
or ``page limit'' and adding ``or word count'' after ``a certificate of 
service'' in paragraph (a)(1);
     substituting ``14,000 words'' for ``60 pages'' in 
paragraphs (a)(1)(i) and (a)(1)(iv);
     substituting ``18,700 words'' for ``80 pages'' in 
paragraphs (a)(1)(ii) and (a)(1)(iii);
     substituting ``word counts'' for ``page limits'' and 
``word count'' for ``page limit'' in paragraph (a)(2) except for the 
last sentence in which ``word counts or'' is added before ``page 
limits;''
     adding ``word counts or'' before the ``page limits'' in 
paragraph (b);
     substituting ``word counts'' for the two instances of 
``page limits'' in paragraph (b)(1);
     substituting ``word counts'' for the two instances of 
``page limits'' in paragraph (b)(2);
     adding ``word counts or'' before the two instances of 
``page limits'' and adding ``or word count'' after ``a certificate of 
service'' in paragraph (c);
     substituting ``5,600 words'' for ``25 pages'' in paragraph 
(c)(1);
     adding paragraph (d) concerning word count certification. 
See the proposed text in the amendatory instructions below.

Rule 11-Type Certification

    The Office proposes to amend 37 CFR 42.11 to add ``signing papers; 
representations to the Board; sanctions'' to the title of the section, 
to designate existing text as paragraph (a), and to add paragraphs (b) 
through (d) to include a Rule 11-type certification for all papers 
filed with the Board with a provision for sanctions for noncompliance. 
See the proposed text in the amendatory instructions below.

Rulemaking Considerations

A. Administrative Procedure Act (APA)

    This proposed rule would revise 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 proposed in this notice 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. 
These rules are procedural 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 * * * .''). The Office, however, is providing a sixty day 
comment period in order to seek the benefit of the public's views.

B. Regulatory Flexibility Act

    For the reasons set forth herein, the Deputy General Counsel for 
General Law of the United States Patent and Trademark Office has 
certified to the Chief Counsel for Advocacy of the Small Business 
Administration that changes proposed in this notice will not have a 
significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b). The changes proposed in this document are to 
revise certain trial practice procedures before the Board. Any 
requirements resulting from these proposed changes are of minimal or no 
additional burden to those practicing before the Board. Specifically, 
proposed changes pertaining to representation would not present any 
additional burden as the duty of candor and good faith are already 
requirements under existing Board trial practice (37 CFR 42.11), USPTO 
rules of professional conduct, and, for those who are attorneys, 
applicable State bars. Second, changes imposed by converting certain 
page limits to word counts for petitions and motions are not expected 
to result in any material change to filings, other than the addition of 
a certification that the filing is compliant. Finally, the proposed 
changes pertaining to the inclusion of supporting evidence in a patent 
owner preliminary response to petition are not required to be filed, 
but merely available to parties should they choose. Moreover, the 
Office anticipates that the vast majority of those that will provide 
such supporting evidence during the petition review stage would have 
provided such information later anyway, if and when, a trial were 
instituted. For the foregoing reasons, the changes proposed in this 
notice will not have a significant economic impact on a substantial 
number of small entities.

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

[[Page 50745]]

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 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, the Office proposes to 
amend 37 CFR part 42 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 42.11 is revised to read as follows:


Sec.  42.11  Duty of candor; signing papers; representations to the 
Board; sanctions.

    (a) Duty of candor. Parties and individuals involved in the 
proceeding have a duty of candor and good faith to the Office during 
the course of a proceeding.
    (b) Signature. Every petition, response, written motion, and other 
paper filed in a proceeding must be signed by at least lead counsel or 
designated backup counsel under

[[Page 50746]]

Sec.  42.10 in the attorney's or registered practitioner's name--or by 
a party personally if the party is unrepresented. The Board may expunge 
any unsigned submission unless the omission is promptly corrected after 
being called to the counsel's or party's attention.
    (c) Representations to the Board. By presenting to the Board a 
petition, response, written motion, or other paper--whether by signing, 
filing, submitting, or later advocating it--an attorney, registered 
practitioner, or unrepresented party certifies that to the best of the 
person's knowledge, information, and belief, formed after an inquiry 
reasonable under the circumstances:
    (1) It is not being presented for any improper purpose, such as to 
harass, cause unnecessary delay, or needlessly increase the cost of the 
proceeding;
    (2) The claims, defenses, and other legal contentions are warranted 
by existing law or by a non-frivolous argument for extending, 
modifying, or reversing existing law or for establishing new law;
    (3) The factual contentions have evidentiary support; and
    (4) The denials of factual contentions are warranted on the 
evidence.
    (d) Sanctions--(1) In general. If, after notice and a reasonable 
opportunity to respond, the Board determines that paragraph (c) of this 
section has been violated, the Board may impose an appropriate sanction 
on any attorney, registered practitioner, law firm, patent agent, or 
party that violated the rule or is responsible for the violation. 
Absent exceptional circumstances, a law firm must be held jointly 
responsible for a violation committed by its partner, associate, or 
employee.
    (2) Motion for sanctions. A motion for sanctions must be made 
separately from any other motion and must describe the specific conduct 
that allegedly violates paragraph (c) of this section. The motion must 
be authorized by the Board under Sec.  42.20. Prior to seeking 
authorization to file a motion for sanctions, the moving party must 
provide written notice to the other party of the basis for the proposed 
motion. A motion for sanctions must not be filed or be presented to the 
Board if the challenged paper, claim, defense, contention, or denial is 
withdrawn or appropriately corrected within 21 days after service of 
such notice or within another time the Board sets. If warranted, the 
Board may award to the prevailing party the reasonable expenses, 
including attorney's fees, incurred for the motion.
    (3) On the Board's initiative. On its own, the Board may order an 
attorney, registered practitioner, law firm, or party to show cause why 
conduct specifically described in the order has not violated paragraph 
(c) of this section.
    (4) Nature of a sanction. A sanction imposed under this rule must 
be limited to what suffices to deter repetition of the conduct or 
comparable conduct by others similarly situated and should be 
consistent with Sec.  42.12.
    (5) Requirements for an order. An order imposing a sanction must 
describe the sanctioned conduct and explain the basis for the sanction.
    (e) Inapplicability to discovery. This rule does not apply to 
disclosures and discovery requests, responses, and objections.
0
3. Section 42.24 is revised to read as follows:


Sec.  42.24  Type-Volume and page-limits for petitions, motions, 
oppositions, and replies.

    (a) Petitions and motions. (1) The following word counts or 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 word count or page limit does not include a table of 
contents, a table of authorities, a certificate of service or word 
count, exhibits, appendix, or claim listing.
    (i) Petition requesting inter partes review: 14,000 words.
    (ii) Petition requesting post-grant review: 18,700 words.
    (iii) Petition requesting covered business method patent review: 
18,700 words.
    (iv) Petition requesting derivation proceeding: 14,000 words.
    (v) Motions (excluding motions to amend): 15 pages.
    (vi) Motions to Amend: 25 pages.
    (2) Petitions to institute a trial must comply with the stated word 
counts but may be accompanied by a motion to waive the word counts. The 
petitioner must show in the motion how a waiver of the word counts is 
in the interests of justice and must append a copy of proposed petition 
exceeding the word count to the motion. If the motion is not granted, 
the proposed petition exceeding the word count may be expunged or 
returned. Any other motion to waive word counts or page limits must be 
granted in advance of filing a motion, opposition, or reply for which 
the waiver is necessary.
    (b) Patent owner responses and oppositions. The word counts or page 
limits set forth in this paragraph do not include a listing of facts 
which are admitted, denied, or cannot be admitted or denied.
    (1) The word counts for a patent owner preliminary response to 
petition are the same as the word counts for the petition.
    (2) The word counts for a patent owner response to petition are the 
same as the word counts for the petition.
    (3) The page limits for oppositions are the same as those for 
corresponding motions.
    (c) Replies. The following word counts or page limits for replies 
apply and include any statement of facts in support of the reply. The 
word counts or page limits do not include a table of contents, a table 
of authorities, a listing of facts which are admitted, denied, or 
cannot be admitted or denied, a certificate of service or word count, 
or appendix of exhibits.
    (1) Replies to patent owner responses to petitions: 5,600 words.
    (2) Replies to oppositions (excluding replies to oppositions to 
motions to amend): 5 pages.
    (3) Replies to oppositions to motions to amend: 12 pages.
    (d) Certification. Any petition, preliminary response, patent owner 
response, or reply whose length is specified by type-volume limits must 
include a certification stating the number of words in the petition, 
motion, opposition, or reply. A party may rely on the word count of the 
word-processing system used to prepare the petition, preliminary 
response, patent owner response, or reply.
0
4. Section 42.70 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.70  Oral argument.

* * * * *
    (b) Demonstrative exhibits must be served at least seven business 
days before oral argument and filed no later than the time of the oral 
argument.

Subpart B--Inter Partes Review

0
5. Section 42.100 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.100  Procedure; pendency.

* * * * *
    (b) A claim in an unexpired patent that will not expire before a 
final written decision is issued shall be given its broadest reasonable 
construction in light of the specification of the patent in which it 
appears.
* * * * *
0
6. Section 42.107 is amended by revising paragraph (a) and removing and 
reserving paragraph (c) to read as follows:


Sec.  42.107  Preliminary response to petition.

    (a) The patent owner may file a preliminary response to the 
petition. The response may set forth the reasons why no inter partes 
review should be

[[Page 50747]]

instituted under 35 U.S.C. 314 and can include supporting evidence. The 
preliminary response is subject to the word count under Sec.  42.24.
* * * * *
    (c) [Reserved]
* * * * *
0
7. Section 42.108 is amended by revising paragraph (c) to read as 
follows:


Sec.  42.108  Institution of inter partes review.

* * * * *
    (c) Sufficient grounds. Inter partes review shall not be instituted 
for a ground of unpatentability unless the Board decides that the 
petition supporting the ground would demonstrate that there is a 
reasonable likelihood that at least one of the claims challenged in the 
petition is unpatentable. The Board's decision will take into account a 
patent owner preliminary response where such a response is filed, but 
supporting evidence concerning disputed material facts will be viewed 
in the light most favorable to the petitioner for purposes of deciding 
whether to institute an inter partes review. If the patent owner 
submits supporting evidence with its preliminary response, the 
petitioner may seek leave to file a reply to the preliminary response 
in accordance with Sec.  42.24(c).

Subpart C--Post-Grant Review

0
8. Section 42.200 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.200  Procedure; pendency.

* * * * *
    (b) A claim in an unexpired patent that will not expire before a 
final written decision is issued shall be given its broadest reasonable 
construction in light of the specification of the patent in which it 
appears.
* * * * *
0
9. Section 42.207 is amended by revising paragraph (a) and removing and 
reserving paragraph (c) to read as follows:


Sec.  42.207  Preliminary response to petition.

    (a) The patent owner may file a preliminary response to the 
petition. The response may set forth the reasons why no post-grant 
review should be instituted under 35 U.S.C. 324 and can include 
supporting evidence. The preliminary response is subject to the word 
count under Sec.  42.24.
* * * * *
    (c) [Reserved]
* * * * *
0
10. Section 42.208 is amended by revising paragraph (c) to read as 
follows:


Sec.  42.208  Institution of post-grant review.

* * * * *
    (c) Sufficient grounds. Post-grant review shall not be instituted 
for a ground of unpatentability unless the Board decides that the 
petition supporting the ground would, if unrebutted, demonstrate that 
it is more likely than not that at least one of the claims challenged 
in the petition is unpatentable. The Board's decision will take into 
account a patent owner preliminary response where such a response is 
filed, but supporting evidence concerning disputed material facts will 
be viewed in the light most favorable to the petitioner for purposes of 
deciding whether to institute a post-grant review. If the patent owner 
submits supporting evidence with its preliminary response, the 
petitioner may seek leave to file a reply to the preliminary response 
in accordance with Sec.  42.24(c).
* * * * *

Subpart D--Transitional Program for Covered Business Method Patents

0
11. Section 42.300 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.300  Procedure; pendency.

* * * * *
    (b) A claim in an unexpired patent that will not expire before a 
final written decision is issued shall be given its broadest reasonable 
construction in light of the specification of the patent in which it 
appears.
* * * * *

    Dated: August 12, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-20227 Filed 8-19-15; 8:45 am]
 BILLING CODE 3510-16-P