[Federal Register Volume 77, Number 157 (Tuesday, August 14, 2012)]
[Rules and Regulations]
[Pages 48755-48773]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-17908]
[[Page 48755]]
Vol. 77
Tuesday,
No. 157
August 14, 2012
Part V
Department of Commerce
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Patent and Trademark Office
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37 CFR Part 42
Office Patent Trial Practice Guide; Rule
Federal Register / Vol. 77 , No. 157 / Tuesday, August 14, 2012 /
Rules and Regulations
[[Page 48756]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0094]
Office Patent Trial Practice Guide
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of practice guide.
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SUMMARY: The Leahy-Smith America Invents Act (AIA) establishes several
new trial proceedings to be conducted by the Patent Trial and Appeal
Board (Board) including inter partes review, post-grant review, the
transitional program for covered business method patents, and
derivation proceedings. In separate rulemakings, the United States
Patent and Trademark Office (Office or USPTO) is revising the rules of
practice to implement these provisions of the AIA that provide for the
trial proceedings before the Board. The Office publishes in this notice
a practice guide for the trial final rules to advise the public on the
general framework of the regulations, including the structure and times
for taking action in each of the new proceedings.
DATES: Effective Date: This practice guide applies to inter partes
review, post-grant review, and covered business method patent review
proceedings commencing on or after September 16, 2012, as well as
derivation proceedings commencing on or after March 16, 2013.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Board of Patent Appeals and Interferences (will be
renamed as Patent Trial and Appeal Board on September 16, 2012), by
telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary: The patent trial regulations lay out a framework
for conducting the proceedings aimed at streamlining and converging the
issues for decision. In doing so, the Office's goal is to conduct
proceedings in a timely, fair, and efficient manner. Further, the
Office has designed the proceedings to allow each party to determine
the preferred manner of putting forward its case, subject to the
guidance of judges who determine the needs of a particular case through
procedural and substantive rulings throughout the proceedings.
Background: The Leahy-Smith America Invents Act establishes several
new trial proceedings to be conducted by the Board including: (1) Inter
partes review (IPR); (2) post-grant review (PGR); (3) a transitional
program for covered business method patents (CBM); and (4) derivation
proceedings. The AIA requires the Office to promulgate rules for the
proceedings, with the PGR, IPR, and CBM rules to be in effect one year
after AIA enactment and the derivation rules to be in effect 18 months
after AIA enactment.
Consistent with the statute, the Office published a number of
notices of proposed rulemaking in February of 2012, and requested
written comments on the Office's proposed implementation of the new
trial proceedings of the AIA. The Office also hosted a series of public
educational roadshows, across the country, regarding the proposed
rules.
Additionally, the Office published a practice guide based on the
proposed trial rules in the Federal Register to provide the public an
opportunity to comment. Practice Guide for Proposed Trial Rules, 77 FR
6868 (Feb. 9, 2012) (Request for Comments) (hereafter ``Practice Guide
for Proposed Trial Rules'' or ``Office Patent Trial Practice Guide'').
This Office Patent Trial Practice Guide is intended to advise the
public on the general framework of the rules, including the structure
and times for taking action in each of the new proceedings.
In response to the notices of proposed rulemaking and the Practice
Guide notice, the Office received 251 submissions of written comments
from intellectual property organizations, businesses, law firms, patent
practitioners, and others, including a United States senator who was a
principal author of section 18 of the AIA. The comments provided
support for, opposition to, and diverse recommendations on the proposed
rules. The Office appreciates the thoughtful comments, and has
considered and analyzed the comments thoroughly. In light of the
comments, the Office has made modifications to the proposed rules to
provide clarity and to balance the interests of the public, patent
owners, patent challengers, and other interested parties, in light of
the statutory requirements and considerations, such as the effect of
the regulations on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete the proceedings timely.
For the implementation of sections 3, 6, 7, and 18 of the AIA that
are related to administrative trials and judicial review of Board
decisions, the Office is publishing the following final rules in
separate notices in the Federal Register: (1) Rules of Practice for
Trials before the Patent Trial and Appeal Board and Judicial Review of
Patent Trial and Appeal Board Decisions (RIN 0651-AC70); (2) Changes to
Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents (RIN 0651-AC71); (3) Transitional Program for Covered Business
Method Patents--Definitions of Covered Business Method Patent and
Technological Invention (RIN 0651-AC75); and (4) Changes to Implement
Derivation Proceedings (RIN 0651-AC74). The Office also provides
responses to the public written comments in these final rules in the
Response to Comments sections of the notices.
Further, the Office revised the Office Patent Trial Practice Guide
based on the final rules. The Office has been working diligently to
publish all of the final rules related to the new AIA trial proceedings
and the Office Patent Trial Practice Guide in the Federal Register
concurrently. Due to certain limitations, however, the Office Patent
Trial Practice and the specific final rule for derivation proceedings
will be published in the Federal Register after the other final rules.
In particular, the specific rules for derivation, i.e., Sec. Sec.
42.404 through 42.412, will be published at a later date.
Statutory Requirements: The AIA provides certain minimum
requirements for each of the new proceedings. Provided below is a brief
overview of these requirements.
Proceedings begin with the filing of a petition to institute a
trial. The petition must be filed with the Board consistent with any
time period required by statute and be accompanied by the evidence the
petitioner seeks to rely upon. See, e.g., 35 U.S.C. 135(a) and 311(c),
as amended, and Sec. 42.3 (references to Sec. 42.x or Sec. 1.x refer
to title 37 of the Code of Federal Regulations). For IPR, PGR, and CBM,
the patent owner is afforded an opportunity to file a preliminary
response. 35 U.S.C. 313, as amended, and 35 U.S.C. 323.
The Board acting on behalf of the Director may institute a trial
where the petitioner establishes that the standards for instituting the
requested trial are met taking into account any preliminary response
filed by the patent owner. Conversely, the Board may not authorize a
trial where the information presented in the petition, taking into
account any patent owner preliminary response, fails to meet the
requisite standard for instituting the trial. See e.g., 35 U.S.C. 314,
as amended, and 35 U.S.C. 324. Where there are multiple matters in the
Office involving the same patent, the Board may determine how
[[Page 48757]]
the proceedings will proceed, including providing for a stay, transfer,
consolidation, or termination of any such matter. See, e.g., 35 U.S.C.
315, as amended, and 35 U.S.C. 325.
The AIA requires that the Board conduct AIA trials and that the
Director prescribe regulations concerning the conduct of those trials.
35 U.S.C. 6, 135, and 316, as amended, and 35 U.S.C. 326. For example,
for IPR, PGR, and CBM, the AIA mandates the promulgation of rules
including motions to seal, procedures for filing supplemental
information, standards and procedures for discovery, sanctions for
improper use of the proceeding, entry of protective orders, and oral
hearings. See, e.g., 35 U.S.C. 316(a), as amended, and 35 U.S.C. 326.
Additionally, the AIA mandates the promulgation of rules for IPR, PGR,
and CBM concerning the submission of a patent owner response with
supporting evidence and allowing the patent owner a motion to amend the
patent. Id.
A petitioner and a patent owner may terminate the proceeding with
respect to the petitioner by filing a written agreement with the Board,
unless the Board has already decided the merits of the proceeding
before the request for termination is filed. See, e.g., 35 U.S.C. 317,
as amended, and 35 U.S.C. 327. If no petitioner remains in the
proceeding, the Board may terminate the review or proceed to a final
written decision. For derivation proceedings, the parties may arbitrate
issues in the proceeding, but nothing precludes the Office from
determining the patentability of the claimed inventions involved in the
proceeding. 35 U.S.C. 135, as amended. Where a trial has been
instituted and not dismissed, the Board will issue a final written
decision with respect to the involved patent and/or applications. 35
U.S.C. 135 and 35 U.S.C. 318, as amended, and 35 U.S.C. 328.
For IPR, PGR, and CBM, the AIA requires that the Office consider
the effect of the regulations on the economy, the integrity of the
patent system, the efficient administration of the Office, and the
ability of the Office to timely complete the proceedings. 35 U.S.C.
316, as amended, and 35 U.S.C. 326. In developing the general trial
rules, as well as the specific rules for the individual proceedings,
the Office has taken these considerations into account. Further, the
specific rules for the individual proceedings take into account the
jurisdictional and timing requirements for the particular proceedings.
General Overview of Proceedings: Generally, the proceedings begin
with the filing of a petition that identifies all of the claims
challenged and the grounds and supporting evidence on a claim-by-claim
basis. Within three months of notification of a filing date, the patent
owner in an IPR, PGR, or CBM proceeding may file a preliminary response
to the petition, including a simple statement that the patent owner
elects not to respond to the petition. The Board acting on behalf of
the Director will determine whether to institute a trial within three
months of the date the patent owner's preliminary response was due or
was filed, whichever is first.
In instituting a trial, the Board will narrow the issues for final
decision by authorizing the trial to proceed only on the challenged
claims for which the threshold standards for the proceeding have been
met. Further, the Board will identify, on a claim-by-claim basis, the
grounds on which the trial will proceed. Any claim or issue not
included in the authorization for review will not be part of the trial.
A party dissatisfied with the Board's determination to institute a
trial may request rehearing as to points believed to have been
overlooked or misapprehended. See Sec. 42.71(d) and (c).
The Board will enter a Scheduling Order (Appendix A) concurrent
with the decision to institute a trial. The Scheduling Order will set
due dates for the trial taking into account the complexity of the
proceeding but ensuring that the trial is completed within one year of
institution.
For example, a Scheduling Order for an IPR or PGR might, consistent
with Sec. Sec. 42.120 and 42.220, provide a three month deadline for
patent owner discovery and for filing a patent owner response and
motion to amend. Once the patent owner's response and motion to amend
have been filed, the Scheduling Order might provide the petitioner with
three months for discovery and for filing a petitioner's reply to the
response and the petitioner's opposition to the amendment. The
Scheduling Order might then provide the patent owner with one month for
discovery and for filing a patent owner reply to petitioner's
opposition to a patent owner amendment. A representative timeline is
provided below:
[GRAPHIC] [TIFF OMITTED] TR14AU12.000
Sequence of discovery. Once instituted, absent special
circumstances, discovery will proceed in a sequenced fashion. For
example, the patent owner may begin deposing the petitioner's
declarants once the proceeding is instituted. After the patent owner
has filed a patent owner response and any motion to amend the claims,
the petitioner may depose the patent owner's declarants. Similarly,
after the petitioner has filed a reply to the patent
[[Page 48758]]
owner's response and an opposition to an amendment, the patent owner
may depose the petitioner's declarants and file a reply in support of
its claim amendments. Where the patent owner relies upon new
declaration evidence in support of its amendments, the petitioner will
be authorized to depose the declarants and submit observations on the
deposition. Once the time for taking discovery in the trial has ended,
the parties will be authorized to file motions to exclude evidence
believed to be inadmissible. Admissibility of evidence is generally
governed by the Federal Rules of Evidence.
Sequence of filing responses and motions. An initial conference
call will be held about one month from the date of institution to
discuss the motions that the parties intend to file and to determine if
any adjustment needs to be made to the Scheduling Order. The patent
owner may file a patent owner's response and/or a motion to amend the
claims by the time set in the Scheduling Order. The petitioner will
then file a reply to the patent owner's response and any opposition to
the patent owner's amendment. Both parties will then be permitted an
opportunity to file motions to exclude an opponent's evidence believed
to be inadmissible. After all motions have been filed, the parties will
be afforded an opportunity to have an oral argument at the Board.
Summary of the Rules: The following is a general summary of the
rules for the proceedings.
I. General Procedures
The rules are to be construed so as to ensure the just, speedy, and
inexpensive resolution of a proceeding and, where appropriate, the
rules may be modified to accomplish these goals. Sec. 42.1(b); Sec.
42.5(a) and (b).
A. Jurisdiction and Management of the Record
1. Jurisdiction: 35 U.S.C. 6(b), as amended, provides that the
Board is to conduct derivation proceedings, inter partes reviews, and
post-grant reviews. The Board also conducts the transitional program
for covered business method reviews, which are subject to Board review
under 35 U.S.C. 6(b), as amended, 35 U.S.C. 326(c), and Public Law 112-
29, section 18. The Board therefore will have exclusive jurisdiction
within the Office over every application and patent that is involved in
a derivation, IPR, PGR, or CBM proceeding. Ex parte reexamination
proceedings and inter partes reexamination proceedings are not
``involved'' patents (as defined in Sec. 42.2) in derivation, IPR,
PGR, and CBM proceedings and are thus treated separately except as
ordered by the Board.
2. Prohibition on Ex Parte Communications: All substantive
communications with the Board regarding a proceeding must include all
parties to the proceeding, except as otherwise authorized. Sec.
42.5(d). The prohibition on ex parte communications does not extend to:
(1) Ministerial communications with support staff (for instance, to
arrange a conference call); (2) conference calls or hearings in which
opposing counsel declines to participate; (3) informing the Board in
one proceeding of the existence or status of a related Board
proceeding; or (4) reference to a pending case in support of a general
proposition (for instance, citing a published opinion from a pending
case or referring to a pending case to illustrate a systemic problem).
Arranging a conference call with the Board. The Board encourages
the use of conference calls to raise and resolve issues in an expedited
manner. The Board envisions that most of the procedural issues arising
during a proceeding will be handled during a conference call or shortly
thereafter, i.e., in a matter of days. When arranging a conference
call, parties should be prepared to discuss with a Trial Section
paralegal why the call is needed and what materials may be needed
during the call, e.g., a particular exhibit.
Refusal to participate. The Board has the discretion to permit a
hearing or conference call to take place even if a party refuses to
participate. In such cases, the Board may order as a condition for the
call additional safeguards, such as the recording of the communication
and the entry of the recording into the record.
B. Counsel
Need for lead and back-up counsel. A party represented by counsel
must designate both a lead as well as a back-up counsel who can conduct
business on behalf of the lead counsel, as instances may arise where
lead counsel may be unavailable. Sec. 42.10(a).
Power of attorney. A power of attorney must be filed with the
designation of counsel, unless the designated counsel is already
counsel of record. Sec. 42.10(b).
Pro hac vice. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause, and subject to the requirement
that lead counsel is a registered practitioner. Sec. 42.10(c). The
Board may impose other considerations as well. Id. Proceedings before
the Office can be technically complex. For example, it is expected that
amendments to a patent will be sought. The grant of a motion to appear
pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, and incivility.
The Office expects that lead counsel will, and back-up counsel may,
participate in all hearings and conference calls with the Board and
will sign all papers submitted in the proceeding. In addition, the role
of back-up counsel is to conduct business with the Office on behalf of
lead counsel when lead counsel is not available. Actions not conducted
before the Office (e.g., taking of deposition) may be conducted by lead
or back-up counsel.
C. Electronic Filing
Electronic filing is the default manner in which documents are to
be filed with the Board. Sec. 42.6(b). Electronic filing of legal
documents is being implemented across the country in state and federal
courts. The use of electronic filing aids in the efficient
administration of the proceeding, improves public accessibility, and
provides a more effective document management system for the Office and
parties. The manner of submission will be established by the Board. The
Board will publish electronic submission information on its Web site
(www.uspto.gov/PTAB) in August of 2012. Due to system constraints, no
single uploaded file may exceed 250 megabytes in size.
Paper filing may be used where appropriate, but must be accompanied
by a motion explaining the need for non-electronic filing. Sec.
42.6(b). Based upon experience with contested cases, the Board does not
expect to receive many requests to file paper submissions.
Circumstances where a paper filing may be warranted include those
occasions where the Office's electronic filing system is unable to
accept filings. Alternatively, if a problem with electronic filing
arises during normal business hours, a party may contact the Board and
request a one-day extension of time for due dates that are set by rule
or orders of the Board. Sec. 42.5. In the unlikely event that an
administrative patent judge is not available to rule on the extension,
the Board may grant an extension the day after the paper is due, which
includes situations where electronic filing problems are shown to have
occurred.
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D. Mandatory Notices
The rules require that parties to a proceeding provide certain
mandatory notices, including identification of the real parties-in-
interest, related matters, lead and back-up counsel, and service
information. Sec. 42.8. Where there is a change of information, a
party must file a revised notice within 21 days of the change. Sec.
42.8(a)(3).
1. Real Party-in-Interest or Privy: The core functions of the
``real party-in-interest'' and ``privies'' requirement to assist
members of the Board in identifying potential conflicts, and to assure
proper application of the statutory estoppel provisions. The latter, in
turn, seeks to protect patent owners from harassment via successive
petitions by the same or related parties, to prevent parties from
having a ``second bite at the apple,'' and to protect the integrity of
both the USPTO and Federal Courts by assuring that all issues are
promptly raised and vetted. Cf. Fed. R. Civ. P. 17(a) (Advisory
Committee Note to 1966 Amendment to Rule 17(a)) (``[T]he modern
function of the rule in its negative aspect is simply to protect the
defendant against a subsequent action by the party actually entitled to
recover, and to insure generally that the judgment will have its proper
effect as res judicata.''). The USPTO will apply traditional common-law
principles with these goals in mind and parties will be well-served to
factor in these considerations when determining whom to identify.
Whether a party who is not a named participant in a given
proceeding nonetheless constitutes a ``real party-in-interest'' or
``privy'' to that proceeding is a highly fact-dependent question. See
generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A Charles Alan
Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice &
Procedure Sec. Sec. 4449, 4451 (2d ed. 2011) (hereinafter ``Wright &
Miller''). Such questions will be handled by the Office on a case-by-
case basis taking into consideration how courts have viewed the terms
``real party-in-interest'' and ``privy.'' See, e.g., Taylor, 553 U.S.
at 893-895 and 893 n.6 (noting that ``[t]he list that follows is meant
only to provide a framework [for the decision], not to establish a
definitive taxonomy''). Courts invoke the terms ``real party-in-
interest'' and ``privy'' to describe relationships and considerations
sufficient to justify applying conventional principles of estoppel and
preclusion. Accordingly, courts have avoided rigid definitions or
recitation of necessary factors. Similarly, multiple Federal Rules
invoke the terms without attempting to define them or what factors
trigger their application. See, e.g., Fed. R. Civ. P. 17; Fed. Cir. R.
47.4.
The typical common-law expression of the ``real party-in-interest''
(the party ``who, according to the governing substantive law, is
entitled to enforce the right'') does not fit directly into the AIA
trial context. See 6A Charles Alan Wright, Arthur R. Miller, Mary Kay
Kane, & Richard L. Marcus, Federal Practice & Procedure Civil section
1543 (3d ed. 2011) (discussing Fed. R. Civ. P. 17). That notion
reflects standing concepts, but no such requirement exists in the IPR
or PGR context, although it exists in the CBM context. In an IPR or PGR
proceeding, there is no ``right'' being enforced since any entity
(other than the patent owner) may file an IPR or PGR petition. However,
the spirit of that formulation as to IPR and PGR proceedings means
that, at a general level, the ``real party-in-interest'' is the party
that desires review of the patent. Thus, the ``real party-in-interest''
may be the petitioner itself, and/or it may be the party or parties at
whose behest the petition has been filed. In this regard, the Office's
prior application of similar principles in the inter partes
reexamination context offers additional guidance. See generally In re
Guan et al. Inter Partes Reexamination Proceeding, Control No. 95/
001,045, Decision Vacating Filing Date (Aug. 25, 2008). Similar
considerations apply to CBM proceedings, although the statute governing
those proceedings also requires that the party seeking the proceeding,
or its real party-in-interest or privy, have been sued for infringing
the subject patent, or been charged with infringement under that
patent.
The notion of ``privity'' is more expansive, encompassing parties
that do not necessarily need to be identified in the petition as a
``real party-in-interest.'' The Office intends to evaluate what parties
constitute ``privies'' in a manner consistent with the flexible and
equitable considerations established under federal caselaw. Ultimately,
that analysis seeks to determine whether the relationship between the
purported ``privy'' and the relevant other party is sufficiently close
such that both should be bound by the trial outcome and related
estoppels. This approach is consistent with the legislative history of
the AIA, which indicates that Congress included ``privies'' within the
parties subject to the statutory estoppel provisions in an effort to
capture ``the doctrine's practical and equitable nature,'' in a manner
akin to collateral estoppel. In that regard, the legislative history
endorsed the expression of ``privy'' as follows:
The word ``privy'' has acquired an expanded meaning. The courts,
in the interest of justice and to prevent expensive litigation, are
striving to give effect to judgments by extending ``privies'' beyond
the classical description. The emphasis is not on the concept of
identity of parties, but on the practical situation. Privity is
essentially a shorthand statement that collateral estoppel is to be
applied in a given case; there is no universally applicable
definition of privity. The concept refers to a relationship between
the party to be estopped and the unsuccessful party in the prior
litigation which is sufficiently close so as to justify application
of the doctrine of collateral estoppel.
154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl)
(citing Cal. Physicians' Serv. v. Aoki Diabetes Research Inst., 163
Cal.App.4th 1506 (Cal. App. 2008)); see also 157 Cong. Rec. S1376
(daily ed. Mar. 8, 2011) (incorporating prior 2008 statement).
Subsequent legislative history expanded on the prior discussion of
``privy'' by noting that ``privity is an equitable rule that takes into
account the `practical situation,' and should extend to parties to
transactions and other activities relating to the property in
question.'' 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
Sen. Kyl).
There are multiple factors relevant to the question of whether a
non-party may be recognized as a ``real party-in-interest'' or
``privy.'' See, e.g., Taylor, 553 U.S. at 893-895 and 893 n.6 (noting
that ``[t]he list that follows is meant only to provide a framework
[for the decision], not to establish a definitive taxonomy''). A common
consideration is whether the non-party exercised or could have
exercised control over a party's participation in a proceeding. See,
e.g., id. at 895; see generally Wright & Miller section 4451. The
concept of control generally means that ``it should be enough that the
nonparty has the actual measure of control or opportunity to control
that might reasonably be expected between two formal coparties.''
Wright & Miller Sec. 4451. Courts and commentators agree, however,
that there is no ``bright-line test'' for determining the necessary
quantity or degree of participation to qualify as a ``real party-in-
interest'' or ``privy'' based on the control concept. Gonzalez v. Banco
Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). See also Wright & Miller
section 4451 (``The measure of control by a nonparty that justifies
preclusion cannot be defined rigidly.''). Accordingly, the rules do not
enumerate particular factors regarding a ``control'' theory of ``real
party-in-interest'' or ``privy'' under the statute.
Additionally, many of the same considerations that apply in the
context of ``res judicata'' will likely apply in the
[[Page 48760]]
``real party-in-interest'' or ``privy'' contexts. See Gonzalez, 27 F.3d
at 759; see generally Wright & Miller section 4451. Other
considerations may also apply in the unique context of statutory
estoppel. See generally, e.g., In re Arviv Reexamination Proceeding,
Control No. 95/001,526, Decision Dismissing section 1.182 and section
1.183 Petitions, at 6 (Apr. 18, 2011); In re Beierbach Reexamination
Proceeding, Control No. 95/000,407, Decision on section 1.182 and
section 1.183 Petitions, at 6 (July 28, 2010); In re Schlecht Inter
Partes Reexamination Proceeding, Control No. 95/001,206, Decision
Dismissing Petition, at 5 (June 22, 2010); In re Guan Inter Partes
Reexamination Proceeding, Control No. 95/001,045, Decision Vacating
Filing Date, at 8 (Aug. 25, 2008).
The Office has received requests to state whether particular facts
will qualify a party as a ``real party-in-interest'' or ``privy.'' Some
fact-combinations will generally justify applying the ``real party-in-
interest'' or ``privy'' label. For example, a party that funds and
directs and controls an IPR or PGR petition or proceeding constitutes a
``real party-in-interest,'' even if that party is not a ``privy'' of
the petitioner. But whether something less than complete funding and
control suffices to justify similarly treating the party requires
consideration of the pertinent facts. See, e.g., Cal. Physicians, 163
Cal.App.4th at 1523-25 (discussing the role of control in the ``privy''
analysis, and observing that ``preclusion can apply even in the absence
of such control''). The Office will handle such questions on a case-by-
case basis taking into consideration how courts have viewed the terms.
Similarly, while generally a party does not become a ``real party-in-
interest'' or a ``privy'' of the petitioner merely through association
with another party in an unrelated endeavor, slight alterations in the
facts, as well as consideration of other facts, might result in a
different conclusion. So, for example, if Trade Association X files an
IPR petition, Party A does not become a ``real party-in-interest'' or a
``privy'' of the Association simply based on its membership in the
Association. Similarly, if Party A is part of a Joint Defense Group
with Party B in a patent infringement suit, and Party B files a PGR
petition, Party A is not a ``real party-in-interest'' or a ``privy''
for the purposes of the PGR petition based solely on its participation
in that Group. That is not to say that Party A's membership in Trade
Association X, or the Joint Defense Group, in those scenarios is
irrelevant to the determination; deeper consideration of the facts in
the particular case is necessary to determine whether Party A is a
``real party-in-interest'' or a ``privy'' of the petitioner. Relevant
factors include: Party A's relationship with the petitioner; Party A's
relationship to the petition itself, including the nature and/or degree
of involvement in the filing; and the nature of the entity filing the
petition. In short, because rarely will one fact, standing alone, be
determinative of the inquiry, the Office cannot prejudge the impact of
a particular fact on whether a party is a ``real party-in-interest'' or
``privy'' of the petitioner.
2. Related Matters: Parties to a proceeding are to identify any
other judicial or administrative matter that would affect, or be
affected by, a decision in the proceeding. Judicial matters include
actions involving the patent in federal court. Administrative matters
include every application and patent claiming, or which may claim, the
benefit of the priority of the filing date of the party's involved
patent or application as well as any ex parte and inter partes
reexaminations for an involved patent.
3. Identification of Service Information: Parties are required to
identify service information to allow for efficient communication
between the Board and the parties. Sec. 42.8. Additionally, while the
Board is authorized to provide notice by means other than mailing to
the correspondence address of record, it is ultimately the
responsibility of the applicant or patent owner to maintain a proper
correspondence address in the record. Ray v. Lehman, 55 F.3d 606, 610
(Fed. Cir. 1995).
Under Sec. 42.6(e), service may be made electronically upon
agreement of the parties. For example, the parties could agree that
electronic filing with the Board of a document constitutes electronic
service.
E. Public Availability and Confidentiality
The rules aim to strike a balance between the public's interest in
maintaining a complete and understandable file history and the parties'
interest in protecting truly sensitive information.
1. Public Availability: The record of a proceeding, including
documents and things, shall be made available to the public, except as
otherwise ordered. Sec. 42.14. Accordingly, a document or thing will
be made publicly available, unless a party files a motion to seal that
is then granted by the Board.
2. Confidential information: The rules identify confidential
information in a manner consistent with Federal Rule of Civil Procedure
26(c)(1)(G), which provides for protective orders for trade secret or
other confidential research, development, or commercial information.
Sec. 42.54.
3. Motion To Seal: A party intending a document or thing to be
sealed may file a motion to seal concurrent with the filing of the
document or thing. Sec. 42.14. The document or thing will be
provisionally sealed on receipt of the motion and remain so pending the
outcome of the decision on motion.
4. Protective Orders: A party may file a motion to seal where the
motion contains a proposed protective order, such as the default
protective order in Appendix B. Sec. 42.54. Specifically, protective
orders may be issued for good cause by the Board to protect a party
from disclosing confidential information. Sec. 42.54. Guidelines on
proposing a protective order in a motion to seal, including a Standing
Protective Order, are provided in Appendix B. The document or thing
will be protected on receipt of the motion and remain so, pending the
outcome of the decision on motion.
5. Confidential Information in a Petition: A petitioner filing
confidential information with a petition may, concurrent with the
filing of the petition, file a motion to seal with a proposed
protective order as to the confidential information. A petitioner
filing information under seal with a petition is not required to serve
the confidential information. Sec. 42.55.
A petitioner may seek entry of the default protective order in
Appendix B or may seek entry of an alternative protective order. Where
the petitioner seeks entry of the default protective order, the patent
owner will be given access to the confidential information prior to
institution of the trial by agreeing to the terms of a default order.
Sec. 42.55(a). The Board anticipates that a patent owner may use the
Board's electronic filing system to agree to the default protective
order and would, upon confirmation of the agreement by the Board, be
given access to the provisionally sealed information.
Where a petitioner files a motion to seal with the petition that
seeks entry of a protective order other than the default protective
order, a patent owner may only access the sealed confidential
information prior to the institution of the trial by:
(1) Agreeing to the terms of the protective order requested by the
petitioner;
[[Page 48761]]
(2) Agreeing to the terms of a protective order that the parties
file jointly; or
(3) Obtaining entry of a protective order (e.g., the default
protective order).
For example, the patent owner could arrange a conference call with
the Board and opposing party, and provide a suitable basis for entering
the default protective order as opposed to the petitioner's proposed
protective order. Sec. 42.55(b). The Board anticipates that a patent
owner may use the Board's electronic filing system to agree to the
protective order requested by the petitioner and would, upon
confirmation of the agreement by the Board, be given access to the
provisionally sealed information. Similarly, the Board anticipates that
a patent owner may use the Board's electronic filing system to file a
protective order that the parties jointly agree to and would, upon
confirmation of the agreement by the Board, be given access to the
provisionally sealed information. Alternatively, the patent owner would
be given access on entry of a protective order by the Board.
The rule seeks to streamline the process of seeking protective
orders prior to the institution of the review while balancing the need
to protect confidential information against an opponent's ability to
access information used to challenge the opponent's claims.
6. Expungement of Confidential Information: Confidential
information that is subject to a protective order ordinarily would
become public 45 days after denial of a petition to institute a trial
or 45 days after final judgment in a trial. There is an expectation
that information will be made public where the existence of the
information is referred to in a decision to grant or deny a request to
institute a review or is identified in a final written decision
following a trial. A party seeking to maintain the confidentiality of
information, however, may file a motion to expunge the information from
the record prior to the information becoming public. Sec. 42.56. The
rule balances the needs of the parties to submit confidential
information with the public interest in maintaining a complete and
understandable file history for public notice purposes. The rule
encourages parties to redact sensitive information, where possible,
rather than seeking to seal entire documents.
7. Derivation: A party in a derivation submitting dates of
conception to establish inventorship may wish to file the information
under seal. Where the dates of conception are filed under seal, a party
may request that an opponent not be given access to the conception
dates until the opponent's conception dates have been provided to the
Board.
F. Discovery
Discovery is a tool to develop a fair record and to aid the Board
in assessing the credibility of witnesses. To streamline the
proceedings, the rules and Scheduling Order provide a sequenced
discovery process upon institution of the trial. Specifically, each
party will be provided respective discovery periods, beginning with the
patent owner. The sequenced discovery allows parties to conduct
meaningful discovery before they are required to submit their
respective motions and oppositions during the trial. Thus, discovery
before the Board is focused on what the parties reasonably need to
respond to the grounds raised by an opponent. In this way, the scope of
the trial continually narrows.
1. Routine Discovery: Routine discovery includes: (1) Production of
any exhibit cited in a paper or testimony; (2) the cross-examination of
the other sides declarants; and (3) relevant information that is
inconsistent with a position advanced during the proceeding. Routine
discovery places the parties on a level playing field and streamlines
the proceeding. Board authorization is not required to conduct routine
discovery, although the Board will set the times for conducting this
discovery in its Scheduling Order.
(a) Inconsistent Statements: The following situations exemplify
instances where disclosures of inconsistent statements are to be made.
Example 1: where a petitioner relies upon an expert affidavit alleging
that a method described in a patent cannot be carried out, the
petitioner would be required to provide any non-privileged work
undertaken by, or on behalf of, the petitioner that is inconsistent
with the contentions in the expert's affidavit. Example 2: where a
patent owner relies upon surprising and unexpected results to rebut an
allegation of obviousness, the patent owner should provide the
petitioner with non-privileged evidence that is inconsistent with the
contention of unexpected properties.
(b) Witness Expenses: The burden and expense of producing a witness
for redirect or cross-examination should normally fall on the party
presenting the witness. Thus, a party presenting a witness's testimony
by affidavit should arrange to make the witness available for cross-
examination. This applies to witnesses employed by a party as well as
experts and non-party witnesses. If there are associated expenses such
as expert witness fees or travel, those should be borne by the party
presenting the testimony. Should the witness's testimony be presented
by transcript, the same rules apply, and the witness fees and expenses
should be borne by the presenting party.
(c) Document Translation: All proceedings before the Board will be
conducted in English. Translations therefore must be provided for: (1)
Those documents produced in discovery under Sec. 42.51; and (2) all
documents relied on, or otherwise used, during the proceedings. Unless
accompanied by an English language translation, such documents in a
language other than English will not be considered by the Board.
2. Additional Discovery: A request for additional discovery must be
in the form of a motion, although the parties may agree to discovery
amongst themselves. Sec. 42.51(b)(2). The types of discovery available
under the Federal Rules of Civil Procedure can be sought by the
parties. The standard for granting such requests varies with the
proceeding. An ``interests of justice'' standard applies in IPR and
derivations, whereas the more liberal ``good cause'' standard applies
in PGR and CBM. Id. An additional discovery request could be granted
under either standard, for example, when a party raises an issue where
the evidence on that issue is uniquely in the possession of the party
that raised it.
3. Compelled Testimony: A party can request authorization to compel
testimony under 35 U.S.C. 24. If a motion to compel testimony is
granted, testimony may be (1) ex parte, subject to subsequent cross-
examination, or (2) inter partes. Therriault v. Garbe, 53 USPQ2d 1179,
1184 (BPAI 1999). Prior to moving for or opposing compelled testimony,
the parties should discuss which procedure is appropriate. See Appendix
D for guidance on compelled testimony.
4. Mandatory Initial Disclosures: Section 42.51(a) provides for
mandatory initial disclosures, either by agreement (subparagraph
(a)(1)) or, where the parties fail to reach an agreement, by motion, if
granted (subparagraph (a)(2)). To proceed under Sec. 42.51(a)(1), the
parties must submit any agreement reached on initial disclosures no
later than the filing of the patent owner's preliminary response, or by
the expiration of the time period for filing such a response. See Sec.
42.51(a)(1)(i).
Where the parties agree to mandatory initial disclosures under
Sec. 42.51(a)(1), two options are available as follows:
[[Page 48762]]
Option 1
This first option is modeled after Rule 26(a)(1)(A) of the Federal
Rules of Civil Procedure, and requires disclosure of the following
information: (1) the name and, if known, the address and telephone
number of each individual likely to have discoverable information--
along with the subjects of that information--that the disclosing party
may use to support its claims or defenses, unless the use would be
solely for impeachment; and (2) a copy--or a description by category
and location--of all documents, electronically stored information, and
tangible things that the disclosing party has in its possession,
custody, or control and may use to support its claims or defenses,
unless the use would be solely for impeachment.
Option 2
This second option is more extensive, and includes the following
disclosures listed under both items I and II:
I. If the petition seeks cancellation of one or more claims in
whole or part on the basis of the existence of an alleged prior non-
published public disclosure, the petitioner will provide a statement:
(1) Identifying, to the extent known by the petitioner, the names and
information sufficient to contact all persons other than those offering
affidavits or declarations who are reasonably likely to know of the
alleged prior non-published public disclosure; (2) indicating which of
such persons are within the control of petitioner, or who have
otherwise consented to appear for a testimony in connection with the
proceeding; (3) indicating which, if any, of such persons are
represented by petitioner's counsel; (4) identifying all documents and
things within petitioner's possession, custody, or control referring to
or relating to the alleged prior non-published public disclosure; and
(5) identifying all things relating to the alleged prior non-published
public disclosure, including a complete description, photographs, the
chemical analysis (if the chemical composition is in issue), and
computer code (for computer-related subject matter), and their
locations, and whether petitioner will produce such things for
inspection, analysis, testing, and sampling.
II. If the petition seeks cancellation of one or more claims in
whole or in part on the basis of the alleged obviousness of one or more
of the claims, the petitioner will provide a statement: (1)
identifying, to the extent known by the petitioner, the names and
information sufficient to contact all persons other than those offering
affidavits or declarations who are reasonably likely to have
information regarding the secondary indicia of non-obviousness; (2)
indicating which of such persons are within the control of petitioner,
or have otherwise consented to appear for a testimony in connection
with the proceeding; (3) indicating which, if any, of such persons are
represented by petitioner's counsel; (4) identifying all documents and
things within petitioner's possession, custody, or control referring to
or relating to such secondary indicia of non-obviousness; and (5)
identifying all things relating to the secondary indicia of non-
obviousness, including a complete description, photographs, the
chemical analysis (if the chemical composition is in issue), and
computer code (for computer-related subject matter), and their
locations, and whether petitioner will produce such things for
inspection, analysis, testing, and sampling.
Under Sec. 42.51(a)(1)(ii), upon institution of a trial, the
parties may automatically take discovery of the information identified
in the initial disclosures. Accordingly, the initial disclosures of a
party shall be filed as exhibits as soon as reasonably practicable to
permit discovery related to that information. See Sec. 42.51(a)(1)(i).
5. Live Testimony: Cross-examination may be ordered to take place
in the presence of an administrative patent judge, which may occur at
the deposition or oral arugment. Occasionally, the Board will require
live testimony where the Board considers the demeanor of a witness
critical to assessing credibility. Examples of where such testimony has
been ordered in previous contested cases before the Board include cases
where derivation is an issue, where misconduct is alleged to have
occurred during the proceeding, or where testimony is given through an
interpreter. See Appendix D for guidance on testimony.
6. Times and Locations for Witness Cross-Examination: Under Sec.
42.53(c)(1), the default time limits for compelled direct examination,
cross-examination, and redirect examination are seven hours for direct
examination, four hours for cross-examination, and two hours for
redirect examination. Similarly, under Sec. 42.53(c)(2), the default
time limits for cross-examination, redirect examination, and recross-
examination for uncompelled direct testimony are seven hours for cross-
examination, four hours for redirect examination, and two hours for
recross-examination. See Appendix D: Testimony Guidelines, for more
information.
The rules do not provide for a specific location for taking
testimony other than providing that the testimony may be taken at any
reasonable location in the United States. The Board expects that the
parties will be able to agree upon a reasonable location but will be
available to handle the issue, typically via conference call, where the
parties are unable to agree.
7. E-Discovery: The cost of e-discovery in patent infringement
cases has led a number of courts to adopt special e-discovery rules.
Notably, the Federal Circuit Advisory Committee drafted and adopted a
Model Order Limiting E-Discovery in Patent Cases that is available on
the Federal Circuit's Web site: www.cafc.uscourts.gov. See also Federal
Rule of Evidence 502. In the interest of promoting economic and
procedural efficiency in these proceedings, the Office adopts a default
Model Order Regarding E-Discovery (Appendix C) based on the Federal
Circuit's Model Order, modified to reflect the differences in statutory
requirements. See also Rule 502 of the Federal Rules of Evidence.
Except for routine discovery under the provisions of Sec. 42.51(b)(1),
it is expected that the default Model Order will be entered in a
proceeding whenever discovery of Electronically Stored Information
(ESI) is sought by the parties, whether under the other discovery
provisions of Sec. 42.51, or the compelled discovery provisions of
Sec. 42.52. Should a party desire to obtain production of ESI as part
of additional discovery under Sec. 42.51, Sec. 42.52, or any other
provision of the rules, the matter should be raised with the Board in a
timely fashion before the discovery is scheduled to take place.
II. Petitions and Motions Practice
A. General Motions Practice Information
1. Motions practice: The proceedings begin with the filing of a
petition that lays out the petitioner's grounds and supporting evidence
for the requested proceeding. Additional relief in a proceeding must be
requested in the form of a motion. Sec. 42.20(a).
2. Prior authorization: Generally, a motion will not be entered
without prior Board authorization. Sec. 42.20(b). Exceptions include
motions where it is impractical for a party to seek prior Board
authorization, and motions for which authorization is automatically
granted. Motions where it is not practical to seek prior Board
authorization include motions to seal and motions filed with a
petition, such as motions to waive page limits. Motions where
authorization is
[[Page 48763]]
automatically granted, without a conference with the Board, include
requests for rehearing, observations on cross-examination, and motions
to exclude evidence. The Board expects that the Scheduling Order will
pre-authorize and set times for the filing of observations on cross-
examination and motions to exclude evidence based on inadmissibility.
See Appendix A, Scheduling Order.
Typically, authorization for a motion is obtained during an initial
conference call, which generally occurs within one month of the
institution of IPR, PGR, CBM, and derivation proceedings. Additionally,
where more immediate relief is required or the request arises after the
initial conference call, a party should institute a conference call to
obtain such authorization. Typically, the Board will decide procedural
issues raised in a conference call during the call itself or shortly
thereafter, thereby avoiding the need for additional briefing. The
Board has found that this practice simplifies a proceeding by focusing
the issues early, reducing costs and efforts associated with motions
that are beyond the scope of the proceeding. By taking an active role
in the proceeding, the Board can eliminate delay in the proceeding and
ensure that attorneys are prepared to resolve the relevant disputed
issues.
3. Page Limits: Petitions, motions, patent owner preliminary
responses, patent owner responses, oppositions, and replies filed in
proceedings are subject to page limits in order to streamline the
proceedings. Sec. 42.24. The rules set a limit of 60 pages for
petitions requesting inter partes reviews and derivation proceedings,
80 pages for petitions requesting post-grant review and covered
business method patent reviews, and 15 pages for motions. Sec.
42.24(a). Patent owner preliminary responses to a petition and patent
owner responses to a petition are limited to an equal number of pages
as the corresponding petition, and oppositions are limited to an equal
number of pages as the corresponding motion. Sec. 42.24(b). Replies to
patent owner responses to petitions are limited to 15 pages and replies
to oppositions are limited to five pages. Sec. 42.24(c).
Federal courts routinely use page limits to manage motions practice
as ``[e]ffective writing is concise writing.'' Spaziano v. Singletary,
36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Federal courts have found that
page limits ease the burden on both the parties and the courts, and
patent cases are no exception. Broadwater v. Heidtman Steel Prods.,
Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002) (``Counsel are strongly
advised, in the future, to not ask this Court for leave to file any
memoranda (supporting or opposing dispositive motions) longer than 15
pages. The Court has handled complicated patent cases and employment
discrimination cases in which the parties were able to limit their
briefs supporting and opposing summary judgment to 10 or 15 pages.'').
Although parties are given wide latitude in how they present their
cases, the Board's experience is that the presentation of an
overwhelming number of issues tends to detract from the argument being
presented, and can cause otherwise meritorious issues to be overlooked
or misapprehended. Thus, parties should avoid submitting a repository
of all the information that a judge could possibly consider, and
instead focus on concise, well-organized, easy-to-follow arguments
supported by readily identifiable evidence of record. Another factor to
keep in mind is that the judges of the Board are familiar with the
general legal principles involved in issues which come before the
Board. Accordingly, extended discussions of general patent law
principles are not necessary.
The Office provides the following practical guidance regarding
compliance with the page limits. A party is not required to submit a
statement of material fact in its briefing. Sec. 42.22. Further,
double spacing is not required for claim charts. Sec. 42.6(a)(2)(iii).
4. Testimony Must Disclose Underlying Facts or Data: The Board
expects that most petitions and motions will rely upon affidavits of
experts. Affidavits expressing an opinion of an expert must disclose
the underlying facts or data upon which the opinion is based. See Fed.
R. Evid. 705; and Sec. 42.65. Opinions expressed without disclosing
the underlying facts or data may be given little or no weight. Rohm &
Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)
(nothing in the Federal Rules of Evidence or Federal Circuit
jurisprudence requires the fact finder to credit unsupported assertions
of an expert witness).
5. Tests and Data: Parties often rely on scientific tests and data
to support their positions. Examples include infrared spectroscopy
graphs, high-performance liquid-chromatography data, etc. In addition
to providing the explanation required in Sec. 42.65, a party relying
on a test or data should provide any other information the party
believes would assist the Board in understanding the significance of
the test or the data.
6. Objective Indicia of Nonobviousness: The Board expects that most
petitions will raise issues of obviousness. In determining whether the
subject matter of a claim would have been obvious over the prior art,
the Board will review any objective evidence of nonobviousness
proffered by the patent owner where appropriate.
B. Petition
Proceedings begin with the filing of a petition. The petition lays
out the petitioner's grounds for review and supporting evidence, on a
claim-by-claim basis, for instituting the requested proceeding.
1. Filing date--Minimum Procedural Compliance: To obtain a filing
date, the petition must meet certain minimum standards. See, e.g.,
Sec. 42.106. Generally, the standards required for a petition are
those set by statute for the proceeding requested. See, e.g., 35 U.S.C.
312(a). For example, an IPR requires that a complete petition be filed
with the required fee, and include a certificate of service for the
petition, fee, and evidence relied upon. Sec. 42.106. A complete
petition for IPR requires that the petitioner certify that the patent
is eligible for IPR and that the petitioner is not barred or estopped
from requesting the review, and that the petitioner identify the claims
being challenged and the specific basis for the challenge. Sec.
42.104. Similar petition requirements apply to PGR (Sec. 42.204) and
derivations (Sec. 42.404). CBM proceedings also require a petition
demonstrate that the patent for which review is sought is a covered
business method patent. Sec. 42.304.
2. Burden of Proof for Statutory Institution Thresholds: The burden
of proof in a proceeding before the Board is a preponderance of the
evidence standard. Sec. 42.1(d).
3. Specific Requirements for Petition: A petitioner must certify
that the patent or application is available for review and that the
petitioner is not barred or estopped from seeking the proceeding.
Sec. Sec. 42.104, 42.204, 42.304, and 42.405. Additionally, a
petitioner must identify each claim that is challenged and the specific
statutory grounds on which each challenge to the claim is based,
provide a claim construction for the challenged claims, and state the
relevance of the evidence to the issues raised. Id. For IPR, PGR, and
CBM proceedings, a petitioner must also identify how the construed
claim is unpatentable over the relevant evidence. Sec. Sec. 42.104(b),
42.204(b), and 42.304(b).
4. Covered Business Method/Technological Invention: A petitioner in
a CBM proceeding must demonstrate that the patent for which review is
sought is a covered business method patent. Sec. 42.304(a). Covered
business
[[Page 48764]]
method patents by definition do not include patents for technological
inventions.
The following claim drafting techniques would not typically render
a patent a technological invention:
(a) Mere recitation of known technologies, such as computer
hardware, communication or computer networks, software, memory,
computer-readable storage medium, scanners, display devices or
databases, or specialized machines, such as an ATM or point of sale
device.
(b) Reciting the use of known prior art technology to accomplish a
process or method, even if that process or method is novel and non-
obvious.
(c) Combining prior art structures to achieve the normal, expected,
or predictable result of that combination.
The following are examples of covered business method patents that
are subject to a CBM review proceeding:
(a) A patent that claims a method for hedging risk in the field of
commodities trading.
(b) A patent that claims a method for verifying validity of a
credit card transaction.
The following are examples of patents that claim a technological
invention that would not be subject to a CBM review proceeding:
(a) A patent that claims a novel and non-obvious hedging machine
for hedging risk in the field of commodities trading.
(b) A patent that claims a novel and non-obvious credit card reader
for verifying the validity of a credit card transaction.
5. Claim Charts: While not required, a petitioner may file a claim
chart to explain clearly and succinctly what the petitioner believes a
claim means in comparison to something else, such as another claim, a
reference, or a specification. Where appropriate, claim charts can
streamline the process of identifying key features of a claim and
comparing those features with specific evidence. Claim charts submitted
as part of a petition, motion, patent owner preliminary response,
patent owner response, opposition, or reply count towards applicable
page limits, but are not required to be double-spaced, e.g., to reduce
the number of pages in a petition, claim charts in the petition may be
single-spaced. A claim chart from another proceeding that is submitted
as an exhibit, however, will not count towards page limits.
6. Claim Construction: Regarding the need for a claim construction,
where appropriate, it may be sufficient for a party to provide a simple
statement that the claim terms are to be given their broadest
reasonable interpretation, as understood by one of ordinary skill in
the art and consistent with the disclosure. Alternatively, where a
party believes that a specific term has meaning other than its plain
meaning, the party should provide a statement identifying a proposed
construction of the particular term and where the disclosure supports
that meaning.
The Office has for decades employed the broadest reasonable
interpretation standard to construe claims before the Office, and it
will continue to do so in IPR, PGR, and CBM proceedings for construing
challenged claims as well as any amended or new claims. Sec. Sec.
42.100(b), 42.200(b), and 42.300(b). This approach ensures that the
public can clearly understand the outer limits applicants and patentees
will attribute to their claims. On the other hand, inconsistent results
would become a major issue if the Office adopted a standard of claim
construction other than the broadest reasonable interpretation for IPR,
PGR, and CBM proceedings. As the AIA contemplates, there may be
multiple proceedings involving related patents or patent applications
in the Office at a particular time. For example, there may be an IPR of
a patent that is also subject to an ex parte reexamination, where the
patent is part of a family of co-pending applications all employing the
same claim terminology. The Office applies the broadest reasonable
interpretation standard in those proceedings, and major difficulties
would arise where the Office is handling multiple proceedings with
different applicable claim construction standards.
An essential purpose of the broadest reasonable claim
interpretation standard in the amendment process is to encourage a
patent owner to fashion clear, unambiguous claims. Only through the use
of the broadest reasonable claim interpretation standard can the Office
ensure that uncertainties of claim scope are removed or clarified.
Since patent owners have the opportunity to amend their claims during
IPR, PGR, and CBM trials, unlike in district court proceedings, they
are able to resolve ambiguities and overbreadth through this
interpretive approach, producing clear and defensible patents at the
lowest cost point in the system. Patent owners in IPR, PGR, and CBM
proceedings will be permitted to file a first motion to amend the
patent, after conferring with the Board. Sec. Sec. 42.121(a) and
42.221(a). Moreover, although there is no need to permit multiple
opportunities to amend to justify the application of the broadest
reasonable interpretation standard in an Office proceeding, patent
owners in IPR, PGR, and CBM proceedings may file an additional motion
to amend when there is a good cause showing, or a joint request of the
petitioner and the patent owner to materially advance a settlement.
Sec. Sec. 42.121(c) and 42.221(c). Thus, the Board will apply the
broadest reasonable interpretation standard during IPR, PGR, and CBM
proceedings, consistent with the Office's practice in other
proceedings.
C. Patent Owner Preliminary Response
For IPR, PGR, and CBM proceedings, a patent owner may file a
preliminary response no later than three months after the grant of a
filing date. Sec. Sec. 42.107(b) and 42.207(b). The preliminary
response may present evidence other than new testimonial evidence to
demonstrate that no review should be instituted. Sec. Sec. 42.107(c)
and 42.207(c). New testimonial evidence may be permitted where a party
demonstrates that such evidence is in the interests of justice. For
example, the Board may permit new testimonial evidence where it
addresses issues relating to the petitioner's standing, or where the
Board determines that consideration of the identified evidence is
necessary in the interests of justice as the evidence demonstrates that
the trial may not be instituted.
Potential patent owner preliminary responses include:
(1) The petitioner is statutorily barred from pursuing a review.
(2) The references asserted to establish that the claims are
unpatentable are not in fact prior art.
(3) The prior art lacks a material limitation in all of the
independent claims.
(4) The prior art teaches or suggests away from a combination that
the petitioner is advocating.
(5) The petitioner's claim interpretation for the challenged claims
is unreasonable.
(6) If a petition for post-grant review raises 35 U.S.C. 101
grounds, a brief explanation as to how the challenged claims are
directed to a patent-eligible invention.
Where a patent owner seeks to expedite the proceeding, the patent
owner may file an election to waive the patent owner preliminary
response. Sec. Sec. 42.107(b) and 42.207(b). No adverse inference will
be taken by such an election. Moreover, a patent owner may file a
statutory disclaimer of one or more challenged claims to streamline the
proceedings. Where no challenged claims remain, the Board would
terminate the proceeding. Where one or more challenged claims remain,
the
[[Page 48765]]
Board's decision on institution would be based solely on the remaining
claims. See Sony Computer Entm't Am. Inc. v. Dudas, 2006 WL 1472462
(E.D.Va. 2006).
D. Institution of Review
1. Statutory Threshold Standards: Generally, the Director may
institute a proceeding where a petitioner meets the threshold
standards. There is a different statutory threshold standard for
institution of each type of proceeding. Each of the statutory threshold
standards is summarized below.
(a) Inter Partes Review: 35 U.S.C. 314(a), as amended, provides
that the Director may not authorize institution of an inter partes
review, unless the Director determines that the information presented
in the petition filed under 35 U.S.C. 311, as amended, and any response
filed under 35 U.S.C. 313, as amended, shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
one of the claims challenged in the petition. The ``reasonable
likelihood'' standard is a somewhat flexible standard that allows the
Board room to exercise judgment.
(b) Post-Grant Review: 35 U.S.C. 324(a) provides that the Director
may not authorize institution of a post-grant review, unless the
Director determines that the information presented in the petition
filed under 35 U.S.C. 321, if such information is not rebutted, would
demonstrate that it is more likely than not that at least one of the
claims challenged in the petition is unpatentable. The ``more likely
than not'' standard requires greater than 50% chance of prevailing. In
addition, 35 U.S.C. 324(b) provides that the determination required
under 35 U.S.C. 324(a) may also be satisfied by a showing that the
petition raises a novel or unsettled legal question that is important
to other patents or patent applications.
(c) Covered Business Method Patent Review: Section 18(a)(1) of the
AIA provides that the transitional proceeding for covered business
method patents will be regarded as, and will employ the standards and
procedures of, a post-grant review under chapter 32 of title 35 United
States Code, subject to certain exceptions. Section 18(a)(1)(B) of the
AIA specifies that a person may not file a petition for a transitional
proceeding with respect to a covered business method patent unless the
person or person's real party-in-interest or privy has been sued for
infringement of the patent or has been charged with infringement under
that patent. A covered business method patent means a patent that
claims a method or corresponding apparatus for performing data
processing or other operations used in the practice, administration, or
management of a financial product or service, except that the term does
not include patents for technological inventions.
(d) Derivation: 35 U.S.C. 135(a), as amended, provides that an
applicant for a patent may file a petition to institute a derivation
proceeding. 35 U.S.C. 135(a), as amended, provides that the petition
must state with particularity the basis for finding that a named
inventor in the earlier application derived the claimed invention from
an inventor named in the petitioner's application and, without
authorization, filed the earlier application. The petition must be
filed within one year of the first publication by the earlier applicant
of a claim to the same or substantially the same invention, must be
made under oath, and must be supported by substantial evidence. 35
U.S.C. 135(a), as amended, also provides that the Director may
institute a derivation proceeding, if the Director determines that the
petition demonstrates that the standards for instituting a derivation
proceeding are met.
2. Considerations in Instituting a Review: The Board institutes the
trial on behalf of the Director. Sec. 42.4(a). In instituting the
trial, the Board will consider whether or not a party has satisfied the
relevant statutory institution standard. As part of its consideration,
the Board may take into account whether the same or substantially the
same prior art or arguments were previously presented to the Office
under 35 U.S.C. 325(d).
The Board, in determining whether to institute, may take into
account whether the review could be completed timely. For example, the
Board may decline to institute a proceeding where the Board determines
that it could not complete the proceeding timely. Specifically, the
Board could exercise its discretion to decline to institute a petition
that seeks review of several hundred claims based upon a thousand
references and the patent owner demonstrates that a determination of
patentability would require testimony of dozens of non-party controlled
witnesses in foreign countries for which the testimony would need to be
compelled.
3. Content of Decision on Whether To Institute: In instituting a
trial, the Board will streamline the issues for final decision by
authorizing the trial to proceed only on the challenged claims for
which the threshold standards for the proceeding have been met.
Further, the Board will identify, on a claim-by-claim basis, the
grounds on which the trial will proceed. Any claim or issue not
included in the authorization for review is not part of the trial.
Where no trial is instituted, a decision to that effect will be
provided. The Board expects that the decision will contain a short
statement as to why the standards were not met, although this may not
be necessary in all cases. A party dissatisfied with a decision whether
or not to institute may file a request for rehearing before the Board,
but the Board's determination on whether to institute a trial is final
and nonappealable. 35 U.S.C. 135(a) and 314(d), as amended; 35 U.S.C.
324(e); and Sec. 42.71(c).
4. Scheduling Order: The Board expects that a Scheduling Order
(Appendix A) will be provided concurrent with the decision to institute
the proceeding. The Scheduling Order will set due dates for taking
action accounting for the complexity of the proceeding but ensuring
that the trial is completed within one year of institution.
Furthermore, the parties may request changes to the due dates at the
initial conference call, and stipulate different dates for Due Dates 1
through 5 (earlier or later, but no later than Due Date 6). See
Appendix A.
E. Initial Conference Call (One Month After Instituting Trial)
The Board expects to initiate a conference call within about one
month from the date of institution of the trial to discuss the
Scheduling Order and any motions that the parties anticipate filing
during the trial. Generally, the Board would require a list of proposed
motions to be filed no later than two business days prior to the
conference call. An accurate motions list is necessary to provide the
Board and the opposing parties adequate notice to prepare for the
conference call and to plan for the proceeding. The Board's contested
cases experience demonstrates that discussing the proposed motions
before the motions are authorized to be filed aids the administration
of justice by: (1) Helping the Board and counsel adjust the schedule
for taking action; (2) permitting the Board to determine whether the
listed motions are both necessary and sufficient to resolve the issues
raised; and (3) revealing the possibility that there may be a
dispositive issue that may aid the settlement of the trial. Submission
of a list would not preclude the filing of additional motions not
contained in the list. However, the Board may require prior
authorization to file an additional motion and the set times are not
likely
[[Page 48766]]
to change as a consequence of the new motion.
F. Patent Owner Response
For IPR, PGR, and CBM, the patent owner will be provided an
opportunity to respond to the petition once a trial has been
instituted. 35 U.S.C. 316(a)(8), as amended, and 35 U.S.C. 326(a)(8).
For a derivation proceeding, the applicant or patent owner alleged to
have derived the invention will be provided an opportunity to respond
to the petition once the trial has been instituted. 35 U.S.C. 135(b),
as amended.
The patent owner response is filed as an opposition to the petition
and is subject to the page limits provided in Sec. 42.24. Sec. Sec.
42.120 and 42.220. The response should identify all the involved claims
that are believed to be patentable and state the basis for that belief.
Additionally, the response should include any affidavits or additional
factual evidence sought to be relied upon and explain the relevance of
such evidence. As with the petition, the response may contain a claim
chart identifying key features of a claim and comparing those features
with specific evidence. Where the patent owner elects not to file a
response, the patent owner will arrange for a conference call with the
Board to discuss whether or not the patent owner will file a request
for adverse judgement. Sec. 42.73(b).
G. Motions To Amend
1. IPR, PGR, and CBM Amendments: Patent owners in IPR, PGR, and CBM
may file motions to amend the claims subject to certain conditions.
Sec. Sec. 42.121 and 42.221.
First Motion to Amend: Although patent owners may file a first
motion to amend and need not obtain prior Board authorization, the
patent owner is still required to confer with the Board before filing
the motion. Sec. 42.121(a) or 42.221(a). During this conference call,
it is envisioned that the judge would provide guidance to the patent
owner and petitioner regarding the motion including how the filing of
the motion will impact the schedule. For example, if a patent holder
files a motion to amend the claims, adjustment to the schedule and
authorization to conduct additional discovery may be appropriate.
Additional Motion to Amend. Patent owners seeking to file any
additional motion to amend claims in the patent under Sec. 42.121(c)
or 42.221(c) must seek authorization from the Board to file the motion
to amend. The filing of the additional motion typically would be
authorized if a joint request by the petitioner and patent owner is
made to materially advance a settlement. Alternatively, filing of the
additional motion may be authorized on a showing of good cause. In
determining whether to authorize such an additional motion to amend,
the Board will consider, among other factors, whether a petitioner has
submitted supplemental information after the time period set for filing
a motion to amend in Sec. 42.121(a)(1) or 42.221(a)(1). For example,
in the event that the petitioner is authorized to submit additional
information that was not available to the petitioner before the
petition was filed regarding the patentability of an original claim,
the entry of the additional evidence will increase the likelihood that
an additional motion to amend will be authorized. Other factors, such
as the time remaining for the trial, the degree to which the additional
evidence impacts the patentability of the claims being sought to be
amended, and whether the additional evidence was known to the patent
owner before the time period set in Sec. Sec. 42.121(a) or 42.221(a)
expired, may also be considered in deciding whether the motion should
be authorized.
Due Date. A motion to amend must be filed no later than the time
period for filing a patent owner response, unless a different due date
is provided in a Board order. Sec. 42.121(a) or 42.221(a). The Office
envisions that most motions to amend will be due three months after a
trial is instituted.
Contents of Motion To Amend. Any motion to amend must also comply
the content requirements of Sec. Sec. 42.121(b) or 42.221(b). Sections
42.121(b) and 42.221(b) require that any motion to amend include a
claim listing, show the changes being sought clearly, and describe how
the original disclosure of the patent and any relied upon prior
application supports each claim that is added or amended. A patent
owner may not enlarge the scope of the claims of the patent or add new
matter, 35 U.S.C. 316(d)(3) and 326(d)(3), and it is envisioned that
the amendment that will be sought by most patent owners is a
replacement of a set of broader claims with a set of narrower claims.
Where a motion seeks to replace an original patent claim with a new
claim, the new claim should be identified as a proposed substitute
claim and all changes relative to the original claim clearly discussed.
Any motion to amend must also set forth the support in the original
disclosure of the patent as well as any application for which benefit
of the filing date of the earlier filed disclosure is sought.
Claim Construction. The Board will interpret claims using the
broadest reasonable construction, which is consistent with the statute
and legislative history of the AIA. See, e.g., 35 U.S.C. 316(a)(2) and
(a)(9), as amended, and Sec. 42.100(b). In certain circumstances,
claim construction under the broadest reasonable interpretation will
differ from that of district court. A patent owner, however, will have
opportunities to amend its claims during an administrative trial before
the Board. See, e.g., Sec. 42.121. When filing a motion to amend, a
patent owner may demonstrate that the scope of the amended claim is
substantially identical to that of the original patent claim, as the
original patent claim would have been interpreted by a district court.
In such cases, a patent owner may request that the Board determine that
the amended claim and original patent claim are substantially identical
within the meaning of 35 U.S.C. 252.
2. Amendments in Derivation Proceedings: The filing of a motion to
amend claims by a petitioner or respondent in a derivation proceeding
will be authorized upon a showing of good cause. Sec. 42.20. An
example of good cause is where the amendment materially advances
settlement between the parties or seeks to cancel claims. The Board
expects, however, that a request to cancel all of a party's disputed
claims will be treated as a request for adverse judgment. Sec.
42.73(b).
3. General Practice Tips on Amendments: Motions to amend claims are
expected to be filed by the due dates set for filing a patent owner
response. For authorization to file a motion to amend sought later in
the proceeding, a demonstration of good cause will be required. Motions
to amend filed late in the proceeding may impair a petitioner's ability
to mount a full response in time to meet the statutory deadline for the
proceeding. To reduce the number of issues in dispute, however, motions
to cancel claims will generally be permitted even late in the
proceeding, as will motions to amend to correct simple and obvious
typographical errors.
A motion to amend must be accompanied by the proposed amendment.
See, e.g., Sec. 42.121(b). Claims filed by amendments should be filed
as substitute claims. The amendment should clearly state whether each
claim is ``original,'' ``cancelled,'' ``replaced by proposed
substitute,'' ``proposed substitute for original claim X,'' or
``proposed new claim.''
[[Page 48767]]
Amendments should clearly state where the specification and any
drawings support all the limitations in the proposed substitute claims.
If the Board is unable to determine how the specification and drawings
support the proposed substitute claims, the motion to amend may be
denied.
Motions to amend should clearly state the patentably distinct
features for proposed substitute claims. This will aid the Board in
determining whether the amendment narrows the claims and if the
amendment is responsive to the grounds of unpatentability involved in
the trial. Moreover, a motion to amend may be denied, without
prejudice, if it is determined that patent owner's original claims are
patentable.
The number of substitute claims must be ``reasonable.'' There is a
general presumption that only one substitute claim would be needed to
replace each challenged claim. Sec. Sec. 42.121(a) and 42.221(a). This
presumption may be rebutted by a demonstration of need. The presumption
balances the one-year timeline for final decision against the patent
owner's need to appropriately define the invention.
The following is an example of what may be included in a motion to
amend. The example sets forth a proposed substitute claim that replaces
original patent claims 1-3, a proposed substitute claim that replaces
original patent claim 4, and a proposed new claim reciting newly
claimed subject matter.
Original patent claims:
Claim 1: A bucket comprising:
A shell; and
an attached handle.
Claim 2: The bucket of claim 1 wherein the shell is made of wood.
Claim 3: The bucket of claim 1 wherein the handle is made of metal.
Claim 4: The bucket of claim 1 wherein the bucket has a volume of
2-5 gallons.
Claim listing in a motion to amend:
Claims 1-4 (cancelled).
Claim 5 (substitute for original claims 1-3): A bucket comprising:
A shell made of wood; and
an attached handle made of metal.
Claim 6 (substitute for original claim 4): The bucket of claim 5
wherein the bucket has a volume of 2-5 gallons.
Claim 7 (new claim) The bucket of claim 5 wherein the metal handle
is at least partially made of alloy X.
Discussion of proposed changes:
Proposed claim 5 combines the features originally claimed in claims
1-3 into a single claim. Proposed claim 6 further defines proposed
claim 5 by reciting the limitation originally recited in claim 4.
Proposed claim 7 further defines the invention of proposed claim 5
by requiring the metal handle to be at least partially made of alloy X.
Support for claimed subject matter.
Paragraph 14 of the original disclosure of the application which
issued as the patent under review describes an embodiment where the
shell of the bucket is made of wood and the handle of the bucket is
made of metal. Paragraph 15 of the same specification describes a
volume of 2-5 gallons as a useful volume for the bucket described in
the specification. Paragraph 32 of the same specification describes the
use of alloy X in making the metal handle.
Parent application X similarly describes an embodiment where the
shell of the bucket is made of wood and the handle is made of metal at
paragraph 14. Parent application X does not describe a bucket having a
volume of 2-5 gallons or alloy X.
H. Petitioner Opposition to Amendment
A petitioner will be afforded an opportunity to fully respond to a
patent owner's motion to amend. The time for filing an opposition
generally will be set in a Scheduling Order. No authorization is needed
to file an opposition to a motion to amend. Petitioners may respond to
new issues arising from proposed substitute claims including evidence
responsive to the amendment. 35 U.S.C. 316(a) and 326(a). This includes
the submission of new expert declarations that are directed to the
proposed substitute claims.
I. Petitioner Reply to Patent Owner Response and Patent Owner Reply to
Opposition To Amend
A reply may only respond to arguments raised in the corresponding
opposition. Sec. 42.23. While replies can help crystalize issues for
decision, a reply that raises a new issue or belatedly presents
evidence will not be considered and may be returned. The Board will not
attempt to sort proper from improper portions of the reply. Examples of
indications that a new issue has been raised in a reply include new
evidence necessary to make out a prima facie case for the patentability
or unpatentability of an original or proposed substitute claim, and new
evidence that could have been presented in a prior filing.
J. Other Motions
There are many types of motions that may be filed in a proceeding
in addition to motions to amend. Examples of additional motions include
motions to exclude evidence, motions to seal, motions for joinder,
motions to file supplemental information, motions for judgment based on
supplemental information, motions for observations on cross-
examination, etc.
Where a party believes it has a basis to request relief on a ground
not identified in the rules, the party should contact the Board and
arrange for a conference call with the Board and opposing party to
discuss the requested relief with the judge handling the proceeding.
When filing the motion, the party must comply with the appropriate
requirements. For example, a motion to submit supplemental information
must meet the requirements of Sec. 42.123 or Sec. 42.223: (1) A
request for the authorization to file a motion to submit supplemental
information is made within one month of the date the trial is
instituted; and (2) the supplemental information must be relevant to a
claim for which the trial has been instituted. Further, a party seeking
to submit supplemental information more than one month after the date
the trial is instituted, must request authorization to file a motion to
submit the information. Such a motion to submit supplemental
information must show why the supplemental information reasonably could
not have been obtained earlier, and that consideration of the
supplemental information would be in the interests-of-justice. Sec.
42.123(b) or Sec. 42.223(b).
K. Challenging Admissibility
A party wishing to challenge the admissibility of evidence must
object timely to the evidence at the point it is offered and then
preserve the objection by filing a motion to exclude the evidence.
Sec. 42.64(a), (b)(1), and (c). The time for filing a motion to
exclude evidence will be set in the Scheduling Order. A motion to
exclude evidence must:
(a) Identify where in the record the objection originally was made;
(b) Identify where in the record the evidence sought to be excluded
was relied upon by an opponent;
(c) Address objections to exhibits in numerical order; and
(d) Explain each objection.
A motion to exclude must explain why the evidence is not admissible
(e.g., relevance or hearsay) but may not be used to challenge the
sufficiency of the evidence to prove a particular fact.
L. Observations on Cross-Examination
In the event that cross-examination occurs after a party has filed
its last substantive paper on an issue, such cross-examination may
result in testimony that should be called to the Board's attention, but
the party does not
[[Page 48768]]
believe a motion to exclude the testimony is warranted. The Board may
authorize the filing of observations to identify such testimony and
responses to observations, as defined below.
The party taking the cross-examination files the observations. The
opposing party may file a response to an observation. The opposing
party may not file observations without express prior authorization.
An observation should be a concise statement of the relevance of
identified testimony to an identified argument or portion of an exhibit
(including another part of the same testimony). Any response should be
equally concise. An observation (or response) is not an opportunity to
raise new issues, re-argue issues, or pursue objections. Each
observation should be in the following form:
In exhibit --, on page --, lines--, the witness testified --.
This testimony is relevant to the -- on page -- of --. The testimony
is relevant because --.
The entire observation should not exceed one short paragraph. The
Board may refuse entry of excessively long or argumentative
observations (or responses).
M. Oral Argument
Each party to a proceeding will be afforded an opportunity to
present their case before at least three members of the Board. The time
for requesting an oral argument is normally set in the Scheduling Order
but may be modified on a case-by-case basis.
Generally, a petitioner to a hearing will go first followed by the
patent owner or respondent after which a rebuttal may be given by the
petitioner. The order may be reversed, e.g., where the only dispute is
whether the patent owner's proposed substitute claims overcome the
grounds for unpatentability set forth in the petition.
Special equipment or needs. A party should advise the Board as soon
as possible before an oral argument of any special needs. Examples of
such needs include additional space for a wheel chair, an easel for
posters, or an overhead projector. Parties should not make assumptions
about the equipment the Board may have on hand. Such requests should be
directed in the first instance to a Board Trial Division paralegal at
571-272-9797.
Demonstrative exhibits. The Board has found that elaborate
demonstrative exhibits are more likely to impede than help an oral
argument. The most effective demonstrative exhibits tend to be a
handout or binder containing the demonstrative exhibits. The pages of
each exhibit should be numbered to facilitate identification of the
exhibits during the oral argument, particularly if the argument is
recorded.
Live testimony. The Board does not envision that live testimony is
necessary at oral argument. However, parties may file a motion for live
testimony in appropriate situations.
No new evidence and arguments. A party may rely upon evidence that
has been previously submitted in the proceeding and may only present
arguments relied upon in the papers previously submitted. No new
evidence or arguments may be presented at the oral argument.
N. Settlement
There are strong public policy reasons to favor settlement between
the parties to a proceeding. The Board will be available to facilitate
settlement discussions, and where appropriate, may require a settlement
discussion as part of the proceeding. The Board expects that a
proceeding will terminate after the filing of a settlement agreement,
unless the Board has already decided the merits of the proceeding. 35
U.S.C. 317(a), as amended, and 35 U.S.C. 327.
O. Final Decision
For IPR, PGR, and CBM, the Board will enter a final written
decision not more than one year from the date a trial is instituted,
except that the time may be extended up to six months for good cause.
The Board expects that a final written decision will address the issues
necessary for resolving the proceeding.
In the case of derivation proceedings, although not required by
statute, the Board expects to provide a final decision not more than
one year from the institution of the proceeding. The Board will provide
a final decision as to whether an inventor named in the earlier
application derived the claimed invention from an inventor named in the
petitioner's application and filed the earlier application claiming
such invention without authorization.
P. Rehearing Requests
A party dissatisfied with a decision of the Board may file a
request for rehearing. Sec. 42.71. The burden of showing that a
decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and where each matter
was previously addressed in a motion, an opposition, or a reply.
Evidence not already of record at the time of the decision will not be
admitted absent a showing of good cause. The opposing party should not
file a response to a request for rehearing absent a request from the
Board. The Board envisions that, absent a need for additional briefing
by an opponent, requests for rehearing will be decided approximately
one month after receipt of the request.
APPENDIX A-1: Scheduling Order for Inter Partes Review, Post-Grant
Review, and Covered Business Method Patents Review (based on the trial
rules).
A. DUE DATES
This order sets due dates for the parties to take action after
institution of the proceeding. The parties may stipulate different
dates for DUE DATES 1 through 5 (earlier or later, but no later than
DUE DATE 6). A notice of the stipulation, specifically identifying
the changed due dates, must be promptly filed. The parties may not
stipulate an extension of DUE DATES 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (Sec.
42.64(b)(1)), to supplement evidence (Sec. 42.64(b)(2)), to conduct
cross-examination, and to draft papers depending on the evidence and
cross-examination testimony (see section B, below).
1. DUE DATE 1
The patent owner is not required to file anything in response to
the petition. The patent owner may file--
a. A patent owner's response to the petition, and
b. A motion to amend the patent.
Any response or amendment must be filed by DUE DATE 1. If the
patent owner elects not to file anything, the patent owner must
arrange a conference call with the parties and the Board.
2. DUE DATE 2
Any reply to the patent owner's response, and opposition to the
motion to amend, filed by petitioner under Sec. 42.23 must be filed
by DUE DATE 2.
3. DUE DATE 3
The patent owner must file any reply to the petitioner's
opposition to patent owner's motion to amend by DUE DATE 3.
4. DUE DATE 4
a. The petitioner must file any motion for an observation on the
cross-examination testimony of a reply witness (see section C,
below) by DUE DATE 4. Sec. 42.20.
b. Each party must file any motion to exclude evidence (Sec.
42.64(c)) and any request for oral argument (Sec. 42.70(a)) by DUE
DATE 4.
5. DUE DATE 5
a. The patent owner must file any reply to a petitioner
observation on cross-examination testimony by DUE DATE 5.
b. Each party must file any opposition to a motion to exclude
evidence by DUE DATE 5.
[[Page 48769]]
6. DUE DATE 6
Each party must file any reply for a motion to exclude evidence
by DUE DATE 6.
B. CROSS-EXAMINATION
Except as the parties might otherwise agree, for each due date--
1. Cross-examination begins after any supplemental evidence is
due. Sec. Sec. 42.64(b) and 42.53(d)(2).
2. Cross-examination ends no later than a week before the filing
date for any paper in which the cross-examination testimony is
expected to be used. Id.
C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
A motion for observation on cross-examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross-examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph. The patent owner may respond to the observation.
Any response must be equally concise and specific.
Due Date Appendix
------------------------------------------------------------------------
------------------------------------------------------------------------
DUE DATE 1:
Patent owner's response to the 3 months.
petition.
Patent owner's motion to amend the
patent.
------------------------------------------------------------------------
DUE DATE 2:
Petitioner's reply to patent owner 3 months.
response to petition.
Petitioner's opposition to motion to
amend.
------------------------------------------------------------------------
DUE DATE 3:
Patent owner's reply to petitioner 1 month.
opposition.
------------------------------------------------------------------------
DUE DATE 4:
Petitioner's motion for observation 3 weeks.
regarding cross-examination of reply
witness.
Motion to exclude evidence............
Request for oral argument.............
------------------------------------------------------------------------
DUE DATE 5:
Patent owner's response to observation 2 weeks.
Opposition to motion to exclude.......
------------------------------------------------------------------------
DUE DATE 6:
Reply to opposition to motion to 1 week.
exclude.
------------------------------------------------------------------------
DUE DATE 7:
Oral argument......................... Set on request.
------------------------------------------------------------------------
APPENDIX A-2: Scheduling Order for Derivation Proceedings.
A. DUE DATES
This order sets due dates for the parties to take action in this
proceeding. The parties may stipulate different dates for DUE DATES
1 through 5 (earlier or later, but not later than DUE DATE 6). A
notice of the stipulation, specifically identifying the changed due
dates, must be promptly filed. The parties may not stipulate an
extension of DUE DATES 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (Sec.
42.64(b)(1)), to supplement evidence (Sec. 42.64(b)(2)), to conduct
cross-examination, and to draft papers depending on the evidence and
cross-examination testimony (see section B, below).
1. DUE DATE 1
The respondent is not required to file anything in response to
the petition. The respondent may file--
a. A response to the petition, and
b. A motion to amend, if authorized.
Any such response or motion to amend must be filed by DUE DATE
1. If the respondent elects not to file anything, the respondent
must arrange a conference call with the parties and the Board.
2. DUE DATE 2
The petitioner must file any reply to the respondent's response
and opposition to motion to amend by DUE DATE 2.
3. DUE DATE 3
The respondent must file any reply to the petitioner's
opposition by DUE DATE 3.
4. DUE DATE 4
a. The petitioner must file any observation on the cross-
examination testimony of a reply witness (see section C, below) by
DUE DATE 4.
b. Each party must file any motion to exclude evidence (Sec.
42.64(c)) and any request for oral argument (Sec. 42.70(a)) by DUE
DATE 4.
5. DUE DATE 5
a. The respondent must file any response to a petitioner
observation on cross-examination testimony by DUE DATE 5.
b. Each party must file any opposition to a motion to exclude
evidence by DUE DATE 5.
6. DUE DATE 6
Each party must file any reply for a motion to exclude evidence
by DUE DATE 6.
B. CROSS-EXAMINATION
Except as the parties might otherwise agree, for each due date--
1. Cross-examination begins after any supplemental evidence is
due. Sec. Sec. 42.64(b) and 42.53(d)(2).
2. Cross-examination ends no later than a week before the filing
date for any paper in which the cross-examination testimony is
expected to be used. Id.
C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
A motion for observation on cross-examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross-examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph. The patent owner may respond to the observation.
Any response must be equally concise and specific.
Due Date Appendix
------------------------------------------------------------------------
------------------------------------------------------------------------
DUE DATE 1:
Respondent response to the petition... 3 months.
Respondent motion to amend............
------------------------------------------------------------------------
DUE DATE 2:
Petitioner reply to Respondent 3 months.
response to petition.
Petitioner opposition to Respondent's
motion to amend.
------------------------------------------------------------------------
DUE DATE 3:
Respondent reply to petitioner 1 month.
opposition.
------------------------------------------------------------------------
DUE DATE 4:
Petitioner motion for observation 3 weeks.
regarding cross-examination of reply
witness.
Motion to exclude.....................
Request for oral argument.............
------------------------------------------------------------------------
DUE DATE 5:
Respondent response to observation.... 2 weeks.
Opposition to motion to exclude.......
------------------------------------------------------------------------
DUE DATE 6:
Reply to opposition to motion to 1 week.
exclude.
------------------------------------------------------------------------
DUE DATE 7:
Oral argument......................... Set on request.
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APPENDIX B: Protective Order Guidelines (based on the trial rules).
(a) Purpose. This document provides guidance on the procedures
for filing of motions to seal and the entry of protective orders in
proceedings before the Board. The protective order governs the
protection of confidential information contained in documents,
discovery, or testimony adduced, exchanged, or filed with the Board.
The parties are encouraged to agree on the entry of a stipulated
protective order. Absent such agreement, the default standing
protective order will be automatically entered.
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(b) Timing; lifting or modification of the Protective Order. The
terms of a protective order take effect upon the filing of a Motion
to Seal by a party, and remain in place until lifted or modified by
the Board either on the motion of a party for good cause shown or
sua sponte by the Board.
(c) Protective Order to Govern Treatment of Confidential
Information. The terms of a protective order govern the treatment of
the confidential portions of documents, testimony, and other
information designated as confidential, as well as the filing of
confidential documents or discussion of confidential information in
any papers filed with the Board. The Board shall have the authority
to enforce the terms of the Protective Order, to provide remedies
for its breach, and to impose sanctions on a party and a party's
representatives for any violations of its terms.
(d) Contents. The Protective Order shall include the following
terms:
(1) Designation of Confidential Information. The producing party
shall have the obligation to clearly mark as ``PROTECTIVE ORDER
MATERIAL'' any documents or information considered to be
confidential under the Protective Order.
(2) Persons Entitled to Access to Confidential Information. A
party receiving confidential information shall strictly restrict
access to that information to the following individuals who first
have signed and filed an Acknowledgement as provided herein:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants, or other
persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement,
shall be extended access to confidential information only upon
agreement of the parties or by order of the Board upon a motion
brought by the party seeking to disclose confidential information to
that person. The party opposing disclosure to that person shall have
the burden of proving that such person should be restricted from
access to confidential information.
(F) The Office. Employees and representatives of the U.S. Patent
and Trademark Office who have a need for access to the confidential
information shall have such access without the requirement to sign
an Acknowledgement. Such employees and representatives shall include
the Director, members of the Board and staff, other Office support
personnel, court reporters, and other persons acting on behalf of
the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters, and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding. Such support personnel shall not be required to sign an
Acknowledgement, but shall be informed of the terms and requirements
of the Protective Order by the person they are supporting who
receives confidential information.
(3) Protection of Confidential Information. Persons receiving
confidential information shall take reasonable care to maintain the
confidentiality of that information, including:
(A) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(B) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(C) Ensuring that support personnel of the recipient who have
access to the confidential information understand and abide by the
obligation to maintain the confidentiality of information received
that is designated as confidential; and
(D) Limiting the copying of confidential information to a
reasonable number of copies needed to conduct the proceeding and
maintaining a record of the locations of such copies, which
similarly must be kept secure.
(4) Treatment of Confidential Information. Persons receiving
confidential information shall use the following procedures to
maintain confidentiality of documents and other information--
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information do not qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of
the information submitted to the Board, the submitting party shall
file confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made publicly
available. The non-confidential version of the submission shall
clearly indicate the locations of information that has been
redacted. The confidential version of the submission shall be filed
under seal. The redacted information shall remain under seal, unless
upon motion of a party and after a hearing on the issue, or sua
sponte, the Board determines that some or all of the redacted
information does not qualify for confidential treatment.
(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to another
party during discovery or other proceedings before the Board shall
be clearly marked as ``PROTECTIVE ORDER MATERIAL'' and shall be
produced in a manner that maintains its confidentiality.
(5) Confidential Testimony. Any person providing testimony in a
proceeding may, on the record during the testimony, preliminarily
designate the entirety of the person's testimony and all
transcriptions thereof as confidential, pending further review.
Within ten days of the receipt of the transcript of the testimony,
that person, or that person's representative, shall advise the
opposing party of those portions of the testimony to which a claim
of confidentiality is to be maintained, and the reasons in support
of that claim. Such portions shall be treated as confidential and
maintained under seal in any filings to the Board unless, upon
motion of a party and after a hearing on the issue, or sua sponte,
the Board determines that some or all of the redacted information
does not qualify for confidential treatment.
(6) Other Restrictions Imposed By the Board. In addition to the
foregoing, the Board may, in its discretion, include other terms and
conditions in a Protective Order it enters in any proceeding.
(7) Requirement of Acknowledgement. Any person receiving
confidential information during a proceeding before the Board shall,
prior to receipt of any confidential information, first sign an
Acknowledgement, under penalty of perjury, stating the following:
(A) The person has read the Protective Order and understands its
terms;
(B) The person agrees to be bound by the Protective Order and
will abide by its terms;
(C) The person will use the confidential information only in
connection with that proceeding and for no other purpose;
(D) The person shall only extend access to the confidential
information to support personnel, such as administrative assistants,
clerical staff, paralegals, and the like, who are reasonably
necessary to assist him or her in the proceeding. The person shall
inform such support personnel of the terms and requirements of the
Protective Order prior to disclosure of any confidential information
to such support personnel and shall be personally responsible for
their compliance with the terms of the Protective Order; and
(E) The person agrees to submit to the jurisdiction of the
Office for purposes of enforcing the terms of the Protective Order
and providing remedies for its breach.
(e) Filing of Executed Protective Order. The party filing a
Motion to Seal shall include with its supporting papers a copy of a
proposed Protective Order, signed by the party or its representative
of record, certifying that the party accepts and agrees to the terms
of the Protective Order. Prior to the receipt of confidential
information, any other party to the proceeding also shall file a
copy of the proposed Protective Order, signed by the party or its
representative of record, certifying that the party accepts and
agrees to the terms of the proposed Protective Order. The proposed
Protective Order shall remain in effect until superseded by a
Protective Order entered by the Board.
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(f) Duty To Retain Acknowledgements. Each party to the
proceeding shall maintain a signed Acknowledgement from each person
acting on its behalf who obtains access to confidential information
after signing an Acknowledgement, as set forth herein, and shall
produce such Acknowledgements to the Office upon request.
(g) Motion to Seal. A party may file an opposition to the motion
that may include a request that the terms of the proposed Protective
Order be modified including limiting the persons who are entitled to
access under the Order. Any such opposition shall state with
particularity the grounds for modifying the proposed Protective
Order. The party seeking the modification shall have the burden of
proving that such modifications are necessary. While the motion is
pending, no disclosure of confidential information shall be made to
the persons for whom disclosure is opposed, but the filing of the
motion shall not preclude disclosure of the confidential information
to persons for whom disclosure is not opposed and shall not toll the
time for taking any action in the proceeding.
(h) Other Proceedings. Counsel for a party who receives
confidential information in a proceeding will not be restricted by
the Board from representing that party in any other proceeding or
matter before the Office. Confidential information received in a
proceeding, however, may not be used in any other Office proceeding
in which the providing party is not also a party.
(i) Disposal of Confidential Information. Within one month after
final termination of a proceeding, including any appeals, or within
one month after the time for appeal has expired, each party shall
assemble all copies of all confidential information it has received,
including confidential information provided to its representatives
and experts, and shall destroy the confidential information and
provide a certification of destruction to the party who produced the
confidential information.
DEFAULT PROTECTIVE ORDER
The following Standing Protective Order will be automatically
entered into the proceeding upon the filing of a petition for review
or institution of a derivation:
Standing Protective Order
This standing protective order governs the treatment and filing
of confidential information, including documents and testimony.
1. Confidential information shall be clearly marked ``PROTECTIVE
ORDER MATERIAL.''
2. Access to confidential information is limited to the
following individuals who have executed the acknowledgment appended
to this order:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants or other
persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement shall
be extended access to confidential information only upon agreement
of the parties or by order of the Board upon a motion brought by the
party seeking to disclose confidential information to that person.
The party opposing disclosure to that person shall have the burden
of proving that such person should be restricted from access to
confidential information.
(F) The Office. Employees and representatives of the Office who
have a need for access to the confidential information shall have
such access without the requirement to sign an Acknowledgement. Such
employees and representatives shall include the Director, members of
the Board and their clerical staff, other support personnel, court
reporters, and other persons acting on behalf of the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding shall not be required to sign an Acknowledgement, but
shall be informed of the terms and requirements of the Protective
Order by the person they are supporting who receives confidential
information.
3. Persons receiving confidential information shall use
reasonable efforts to maintain the confidentiality of the
information, including:
(A) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(B) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(C) Ensuring that support personnel of the recipient who have
access to the confidential information understand and abide by the
obligation to maintain the confidentiality of information received
that is designated as confidential; and
(D) Limiting the copying of confidential information to a
reasonable number of copies needed for conduct of the proceeding and
maintaining a record of the locations of such copies.
4. Persons receiving confidential information shall use the
following procedures to maintain the confidentiality of the
information:
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless, upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information do not to qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of
the information submitted to the Board, the submitting party shall
file confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made
available to the public. The nonconfidential version of the
submission shall clearly indicate the locations of information that
has been redacted. The confidential version of the submission shall
be filed under seal. The redacted information shall remain under
seal unless, upon motion of a party and after a hearing on the
issue, or sua sponte, the Board determines that some or all of the
redacted information does not qualify for confidential treatment.
(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to another
party during discovery or other proceedings before the Board shall
be clearly marked as ``PROTECTIVE ORDER MATERIAL'' and shall be
produced in a manner that maintains its confidentiality.
(j) Standard Acknowledgement of Protective Order. The following
form may be used to acknowledge a protective order and gain access
to information covered by the protective order:
[CAPTION]
Standard Acknowledgment for Access to Protective Order Material
I --------, affirm that I have read the Protective Order; that I
will abide by its terms; that I will use the confidential
information only in connection with this proceeding and for no other
purpose; that I will only allow access to support staff who are
reasonably necessary to assist me in this proceeding; that prior to
any disclosure to such support staff I informed or will inform them
of the requirements of the Protective Order; that I am personally
responsible for the requirements of the terms of the Protective
Order and I agree to submit to the jurisdiction of the Office and
the United States District Court for the Eastern District of
Virginia for purposes of enforcing the terms of the Protective Order
and providing remedies for its breach.
[Signature]
APPENDIX C: Model Order Regarding E-Discovery in Trials Before the
Patent Trial and Appeal Board
The Board pursuant to Sec. 42.5 orders as follows:
1. This Order supplements all other discovery rules and orders.
It streamlines Electronically Stored Information (ESI) production to
promote ``the just, speedy, and inexpensive resolution'' of this
proceeding in a manner consistent with Sec. 42.1.
2. This Order may be modified for good cause. The parties shall
jointly submit any
[[Page 48772]]
proposed modifications within one month after the initiation date of
the proceeding or by the date of the initial conference call,
whichever is earlier. If the parties cannot resolve their
disagreements regarding these modifications, the parties shall
submit their competing proposals and a summary of their dispute
within the specified time period.
3. Costs will be shifted for disproportionate ESI production
requests. Likewise, a party's nonresponsive or dilatory discovery
tactics will be cost-shifting considerations. See 35 U.S.C.
316(a)(6), as amended, and 326(a)(6).
4. A party's meaningful compliance with this Order and efforts
to promote efficiency and reduce costs will be considered in cost-
shifting determinations.
5. Unless otherwise authorized by the Board or agreed to by the
parties, any production of ESI pursuant to Sec. Sec. 42.51 or 42.52
shall not include metadata. However, fields showing the date and
time that the document was sent and received, as well as the
complete distribution list, shall generally be included in the
production if such fields exist.
6. General ESI production under Sec. Sec. 42.51 and 42.52 (with
the exception of routine discovery under Sec. 42.51(b)(1)) shall
not include email or other forms of electronic correspondence
(collectively ``email''). To obtain additional production of email,
absent an agreement between the parties to produce, the parties must
propound specific email production requests, which requests require
prior Board authorization.
7. Email production requests, where authorized by the Board or
permitted by agreement of the parties, shall be propounded for
specific issues only, rather than general discovery of a party's
products or business.
8. Email production requests, where authorized by the Board or
permitted by agreement of the parties, shall be phased to occur
after a party's initial production under Sec. 42.51(b)(1).
9. Where email production requests are authorized by the Board
or permitted by agreement of the parties, such requests shall
identify the custodian, search terms, and time frame. The parties
shall cooperate to identify proper custodians, proper search terms,
and proper time frame.
10. Each requesting party shall limit its email production
requests to a total of five custodians per producing party for all
such requests. The parties may jointly agree to modify this limit
without the Board's leave. The Board shall consider contested
requests for up to five additional custodians per producing party,
upon showing a need based on the size, complexity, and issues of
this specific proceeding.
11. Each party shall limit its email production requests to a
total of five search terms per custodian per party. The parties may
jointly agree to modify this limit without the Board's leave. The
Board shall consider contested requests for up to five additional
search terms per custodian, upon showing a need based upon the size,
complexity, and issues of this specific proceeding. The search terms
shall be narrowly tailored to particular issues. Indiscriminate
terms, such as producing company's name or its product name, are
inappropriate unless combined with narrowing search criteria that
sufficiently reduce the risk of overproduction. A conjunctive
combination of multiple words or phrases (e.g., ``computer'' and
``system'') narrows the search and shall count as a single search
term. A disjunctive combination of multiple words or phrases (e.g.,
``computer'' or ``system'') broadens the search, and thus each word
or phrase shall count as a separate search term unless they are
variants of the same word. Use of narrowing search criteria (e.g.,
``and,'' ``but not,'' ``w/x'') is encouraged to limit the
production, and shall be considered when determining whether to
shift costs for disproportionate discovery.
12. The receiving party shall not use ESI that the producing
party asserts is attorney-client privileged or work product
protected to challenge the privilege or protection.
13. Pursuant to Federal Rule of Evidence 502(b), the inadvertent
production of an attorney-client privileged or work product
protected ESI is not a waiver of such protection providing the
holder of the privilege or protection took reasonable steps to
prevent disclosure and the discloser promptly took reasonable steps
to rectify the error.
14. Similar to Federal Rule of Evidence 502(d), the mere
production of ESI in the proceeding as part of a mass production
shall not itself constitute a waiver of privilege for any purpose
before the Office.
APPENDIX D: Testimony Guidelines
Introduction
In trials before the Board, uncompelled direct testimony is
almost always presented by affidavit or declaration. Sec. 42.53(a).
All other testimony (including cross-examination, redirect
examination, and compelled direct testimony) occurs by oral
examination.
Consistent with the policy expressed in Rule 1 of the Federal
Rules of Civil Procedure, and corresponding Sec. 42.1(b),
unnecessary objections, ``speaking'' objections, and coaching of
witnesses in proceedings before the Board are strictly prohibited.
Cross-examination testimony should be a question and answer
conversation between the examining lawyer and the witness. The
defending lawyer must not act as an intermediary, interpreting
questions, deciding which questions the witness should answer, and
helping the witness formulate answers while testifying.
The testimony guidelines that follow are based on those set
forth in the Federal Rules of Civil Procedure, supplemented by the
practices followed in several federal district courts.
Examination and Cross-examination Outside the Presence of the Board
1. The examination and cross-examination of a witness proceed as
they would in a trial under the Federal Rules of Evidence, except
that Rule 103 (Rulings on Evidence) does not apply. After putting
the witness under oath or affirmation, the officer must record the
testimony by audio, audiovisual, or stenographic means. Testimony
must be recorded by the officer personally, or by a person acting in
the presence and under direction of the officer.
2. An objection at the time of the examination--whether to
evidence, to a party's conduct, to the officer's qualifications, to
the manner of taking the testimony, or any aspect of the testimony--
must be noted on the record, but the examination still proceeds;
testimony is taken subject to any such objection.
3. An objection must be stated concisely in a non-argumentative
and non-suggestive manner. Counsel must not make objections or
statements that suggest an answer to a witness. Objections should be
limited to a single word or term. Examples of objections that would
be properly stated are: ``Objection, form''; ``Objection, hearsay'';
``Objection, relevance''; and ``Objection, foundation.'' Examples of
objections that would not be proper are: ``Objection, I don't
understand the question''; ``Objection, vague''; ``Objection, take
your time answering the question''; and ``Objection, look at the
document before you answer.'' An objecting party must give a clear
and concise explanation of an objection if requested by the party
taking the testimony or the objection is waived.
4. Counsel may instruct a witness not to answer only when
necessary to preserve a privilege, to enforce a limitation ordered
by the Board, or to present a motion to terminate or limit the
testimony.
5. Unless otherwise agreed by the parties or ordered by the
Board, the testimony is limited in duration to the times set forth
in Sec. 42.53(c). The Board may allow additional time if needed to
examine the witness fairly or if the witness, another person, or any
other circumstance impedes or delays the examination.
6. Once the cross-examination of a witness has commenced, and
until cross-examination of the witness has concluded, counsel
offering the witness on direct examination shall not: (a) Consult or
confer with the witness regarding the substance of the witness'
testimony already given, or anticipated to be given, except for the
purpose of conferring on whether to assert a privilege against
testifying or on how to comply with a Board order; or (b) suggest to
the witness the manner in which any questions should be answered.
7. An attorney for a witness shall not initiate a private
conference with the witness or call for a break in the proceedings
while a question is pending, except for the purpose of determining
whether a privilege should be asserted.
8. The Board may impose an appropriate sanction--including the
reasonable expenses and attorneys' fees incurred by any party--on a
person who impedes, delays, or frustrates the fair examination of
the witness.
9. At any time during the testimony, the witness or a party may
move to terminate or limit the testimony on the ground that it is
being conducted in bad faith or in a manner that unreasonably
annoys, embarrasses, or oppresses the witness or party. The witness
or party must promptly initiate a conference call with the Board to
discuss the proposed motion. Sec. 42.20(b). If the objecting
witness or party so demands, the testimony must be
[[Page 48773]]
suspended for the time necessary to obtain a ruling from the Board,
except as the Board may otherwise order.
Dated: July 16, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-17908 Filed 8-13-12; 8:45 am]
BILLING CODE 3510-16-P