B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives

A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015). In B&B, the Court held that a decision of the Trademark Trial and Appeal Board (TTAB) can have preclusive effect in subsequent district court proceedings (if the requirements of issue preclusion are otherwise met). That is, the Court determined that the action of an administrative agency can preclude later litigation of the “same issue” in a district court.

At present, the claim construction analysis employed by the Patent Trial & Appeal Board (PTAB), broadest reasonable interpretation (BRI), is considered different than the Philips construction employed by the district courts. For this reason, a claim construction ruling of the agency is not binding in a subsequent litigation pursuant to B&B. Yet, patentees urge that the use of what they consider to be an unfairly broad read of their claims (BRI) at the PTAB leads to improper cancellation of their patents. As I have pointed out previously this is a misguided belief. Different interpretations of a same patent claim term can be found, yet, in my view a proper determination is rarely different under either standard. Nevertheless, to cure this perceived inequity, patentees have consistently urged the PTAB to adopt the Philips analysis of the district courts for AIA trial proceedings. 

Yet as B&B makes clear, if the exact analysis used by the district court (i.e., Philips) is adopted by the PTAB, patentees may be stuck with it. This would put patentees in a far worse position than present. 
If Philips were adopted by the PTAB, a mere 6 months from filing an AIA trial petition, 3 technically trained judges would provide a district court claim construction.  While this preliminary construction is not binding until the time of the final written decision (FWD), an FWD would be in hand 18 months from petition filing. (6 month preliminary proceeding + 12 month trial). Adding to that the tightening of appellate review on claim construction findings after Teva, waiting 18 months for a claim construction that will have preclusive effect (regardless of the outcome on the merits) would seem to be a major simplification factor to consider for district court proceedings. For example, those district courts with longer paths to Markman determinations can simply stay the case and wait for a major component to be decided for them, or for the case to go away all together. Sounds like a great opportunity for patent challengers to me, especially if you accept my view that the Philips analysis will not move the bar in any significant regard for patentees—I’ll say it again, be careful what you wish for patentees.
Right now, B&B Hardware has limited impact at the PTAB as AIA trials are directed to patentability, not validity. Likewise, the limited discovery of AIA trials constrains the development of the factual record in a manner akin to the district courts. That said, purely legal issues that are analyzed the same by the district courts such as entitlement to priority, and ability of a preamble to limit a claim might be leveraged in a later proceeding with the help of B&B. Extra care should be taken in addressing such issues going forward.

Seems the plot thickens almost daily. 

Upcoming PTAB Programs

The USPTO’s Patent Trial & Appeal Board (PTAB) will host a “Boardside Chat” lunch webinar tomorrow, April 7th. This month’s chat will focus on “Do’s and Dont’s of Ex Parte Appeals.”  The bi-monthly chat program updates the public on current Board activities and initiatives. Tomorrow’s dial-in is as follows:

Webinar Access Information:
Event address: uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ee4b8faff5a188332aaa6a752f4b6c292
Event number: 994 593 512
Event password: 123456
Audio conference: Call-in toll number is 1-650-479-3208, access code is 994 593 512

The schedule of topics through October is listed below.

Date

 Time

 Topic

 Speakers
Tuesday, April 7

 Noon to 1PM (EST)

 Do’s and Don’ts for Ex Parte Appeals

 Panel of Administrative Patent Judges
Tuesday, June 2

 Discovery in AIA Trials

 Panel of Practitioners and Administrative Patent Judges
Tuesday, August 4

 AIA Rulemaking and Guidance Changes

 Lead Judge Susan Mitchell
Tuesday, October 6

 Best Practices before the PTAB

 Panel of Administrative Patent Judges

For those seeking CLE in the months ahead, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2015. returns to San Francisco in two weeks.
Apr. 17, 2015 San Francisco, CA (webcast available) (Register here)

Also returning this month is the Patents Post-Grant.com free monthly webinar series. This month’s topic is “PTAB Changes & The Road Ahead.”  A registration link will be posted later this week.

PTAB Definition of “Proceeding” Found Inconsistent With the Law

Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America Invents Act (AIA) is triggered by the mere filing of a CBM petition.  In this case, JP Morgan sought a stay pending a CBM filing, which was denied by the district court.  Shortly thereafter, JP appealed to the CAFC under Section 18. The Patentee argued that appeal was improper because Section 18 only conveyed interlocutory jurisdiction for CBM “proceedings,” and the PTAB had not yet acted on the petition at the time of the appeal— that is, it wasn’t a “proceeding” unless and until instituted.

Relying on a strict read of the language of Section 18, the CAFC found that a “proceeding” followed institution.  On the other hand, the dissent pointed out that such a conclusion was not intended by Congress given that CBM is designed to serve as a litigation substitute.  

While the dissent is certainly correct as to goal of the CBM statutes, the unambiguous nature of statutes rule the day.  Given the efficacy of CBM filings to date, perhaps we will see a technical amendment along these lines. (should any additional patent reform legislation ever make it out the door).  

Of greater interest to me, however,  is the CAFC’s commentary in this decision on the PTAB’s rules defining  “proceeding.”  PTAB rules (37 C.F.R. § 42.2) define a “proceeding” as being “a trial or preliminary proceeding.”  A “preliminary proceeding” is defined as starting with the filing of a petition. The CAFC indicated that such an expansive definition of “proceeding” is inconsistent with the AIA statutes.  What is the impact of this decree on the agency?

One example might be the ability to settle an IPR, PGR, or CBM prior to institution. At present settlement is not uncommon before trial institution, yet does the statute convey that authority under the CAFC’s read of “proceeding”?

35 U.S.C.§ 317 Settlement, provides that:

(a) IN GENERAL.–An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).

(b) AGREEMENTS IN WRITING.–Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

(emphasis added)

Applying the CAFC’s read, the PTAB has the power to terminate instituted proceedings, not pre-institution proceedings. The mention of 315(e) estoppel further supports the CAFC’s read as 315(e) estoppel cannot attach unless the petition moves forward to a written decision— after institution and trial. While Congress may have intended to permit settlement pre-institution, 317 doesn’t seem to provide that authority. (presumably an oversight as settlement prior to institution would seem uncommon) 

On the other hand, the PTAB rule state:

§ 42.74 Settlement.(a) Board role. The parties may agree to settle any issue in a proceeding . . . .

As noted above, the definition of “proceeding” used by the PTAB includes pre-institution filings under 37 C.F.R. § 42.2.

The power to terminate a proceeding for settlement is conveyed by 317. The CAFC would seemingly determine the PTO rules inconsistent with the law on this point. That said, I wouldn’t expect parties to make this argument to the Board if they are seeking settlement.  Instead, parties to such settlements might argue that any settlement agreements need not be provided for pre-institution settlements, that is, the trigger for such is only for settlement of instituted “proceedings.”

AIA Trial Practice & Procedure Mature & New Trends Emerge 

The Patent Trial & Appeal Board (PTAB) has reached steady state in terms of work flow. The number of final decisions (delayed by the 18 month pre-trial and trial phase) are now tracking the significant petition filing rate that began in 2013. The decisions coming due today pertain to late 2013 petition filings. As the work has increased, several trends have emerged.

The most noteworthy trends are detailed below.  

Over Two Dozen Victories on the Merits for Patent Owners

Whether by dint of less low hanging fruit (i.e., stronger target patents), poor petition drafting practice, a tightening of PTAB standards, or a combination of all of these factors, patentees are seeing more success of late. 

Over the past several weeks the PTAB sided with Patent Owners on the merits in well over two dozen denials of institution and final written decisions. The Board is reading both the prior art disclosures and the petitioners’ arguments narrowly. The Board has been quite comfortable finding that petitioners did not carry their burden, even for simple technologies. See, e.g., IPR2014-01173, IPR2014-01552, IPR2014-01174, IPR2014-01280, IPR2014-01029, IPR2014-01414, IPR2014-01452, IPR2015-00096, IPR2014-01456, IPR2014-01564, IPR2014-1096, IPR2014-01440, IPR2015-00022, IPR2014-01084, IPR2014-01369, IPR2014-01423, IPR2014-01370, IPR2014-01371, IPR2014-01373, IPR2014-01490, IPR2014-00379, IPR2014-01476, IPR2014-01090

If It’s Not Spelled Out Within the Four Corners of the Petition . . .

The Board continues to reject arguments on the basis that the petitioner omitted material information or explanation from the petition. Many grounds were rejected on the basis that petitioners did not affirmatively establish that the prior art documents were sufficiently accessible to the public. See, e.g., IPR2014-01457, IPR2015-00146, IPR2014-01053. In one case, the prior art reference was discarded essentially because the petition didn’t specify the date of publication in the copyright notice. CBM2014-00156. In other cases, the Board refused to consider references because they were discussed in a declaration rather than in the body of the petition. E.g., IPR2014-01260. Alternative grounds were considered redundant on several occasions where the petition did not affirmatively explain the “strengths and weaknesses” of each ground. See, e.g., IPR2014-01448.

Several Petitions Fail to List All Real Parties-in-Interest

RPI continues to be a hot-button topic. It caused the demise of many petitions over the last month. See, e.g., IPR2014-00041, IPR2014-01324, IPR2014-01288, IPR2013-00453. While a plain vanilla parent-subsidiary relationship will not cross the line, historical evidence of pattern of control by a parent company justifies finding that the parent should have been listed as a RPI. IPR2014-01422. The latest decisions have focused on whether the third party could have “called the shots” or exercised control over the petition, irrespective of whether any control was actually exercised. See, e.g., IPR2014-01288.

Beware Preparing your Witness for Re-Direct

The panel in Flir v. Leak Surveys (IPR2014-00411, Paper 12) parted with earlier decisions and stated essentially that it was improper to prepare your witness for redirect, as through mock questioning.

Prior Art May Not Be Used to Challenge Indefinite Claims

If claims are deemed indefinite, no prior art grounds will be instituted. In CBM2014-00202, the Board declined to institute trial on the basis that the claims were likely indefinite. In IPR2014-01378 the Board declined to institute because the patent did not disclose sufficient corresponding structure for a means-plus-function element. Same result in IPR2013-00559.

Covered Business Method Definition Construed More Narrowly?

A system for software registration did not qualify as a business method because it did not claim a method or apparatus ‘for performing data processing or other operations used in the practice, administration, or management of a financial product or service.’ CBM2014-00183. Of course, the definition of a “business method” will be examined by the CAFC shortly as the decision in SAP v. Versata is expected any day.  The Patentee, Versata, has been urging the CAFC since oral argument in 2014 (via supplemental filings) that the PTAB is now applying a standard that requires a “financial product” component to claims, a component they argue is not recited in their claims.

Future Trends
As to trends going forward, due to the “quick-fix” rule changes announced last week, it is expected that successful amendments will become more commonplace (although such cases will always be a minority of cases due to intervening rights). Once further proposed changes are implemented lessening the burdens in motions to amend, they should be relatively straight forward filings, likely in 2016 (after necessary notice and comment rule making).

Issue joinder, unfortunately, will continue to be panel dependent as Target v. Destination Maternity will not be designated precedential; this is unfortunate. While reasonable minds may differ on this dispute, the Board should be consistent until guidance is provided by the CAFC.

Page Limit Changes Effective Immediately for All AIA Trial Filings

The USPTO’s Patent Trial & Appeal Board (PTAB) has announced some of their “quick fix” rule changes today in advance of the anticipated Federal Register Notice.  In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year.  The immediate changes are directed to page limits, including:

Page Limits
-Motions to Amend are now limited to 25 pages (formerly 15 pages), and the claims may be attached as an appendix.
-Petitioner Reply Briefs are now limited to 25 pages (formerly 15 pages)

Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:

Proposals (Expected Summer 2015)
The following proposals will be published as notice and comment rule making this summer:

-Allowing some form of new testimonial evidence in patent owner preliminary responses
-Revising the motion to amend showings to be limited to the art of record; certification statement as to other known art.
-Guidance on claim construction practices for soon-to-expire patents
-Treatment of multiple agency proceedings involving the same patent
-Liberalizing discovery standards for RPI disputes
-Clarifying the Trial Practice Guide (e.g., availability of live testimony) 
-Require Rule 11 certifactions for attorneys filing papers
-Establish a pilot program where a single Administrative Patent Judge (APJ) orders institution, this judge will then be joined by two others for a final written decision (FWD).

Whether or not some of these changes are implemented as proposed, will largely depend on comments received in response to the official rule notice. For example, it is unlikely that live testimony will ever be a common event in Inter Partes Review (IPR). That said, the Board seems at least interested in softening the public stance on this option based on due process criticisms. Similarly, while the use of one APJ at institution is unlikely to make a practical difference in outcomes, these changes are responsive to criticisms as to potential panel biases. 
The proposed changes to the amendment process will off-load much of the burden required of current motions to the duty of candor.  I would expect amendments to become far more common once this is implemented, which is a good thing.  On the other hand, any patent amended under such a scenario that exits the PTAB will keep inequitable conduct experts busy for years to come. Still, given the limited resources of the agency, this is probably about as sensible a solution to the amendment conundrum as can be managed. Overall, the page limit revisions are a welcomed change. Likewise, the proposed changes for later this year seem promising in terms of silencing critics.

Now that the agency is out in front of many of the most common PTAB criticisms, and Supreme Court case law is out in front of much of the patent reform debate, this is yet another strong indication that the system is self-correcting without the need of further meddling of Congress.

Should Systemic Changes to The Patent System Be Undertaken in Response to Bad Actors?

Efforts to enact patent reform (as well as the America Invents Act of 2011) are/were largely driven by the perception that the patent system is being abused by bad actors. Currently, many of the most established technology companies in the world are routinely sued for patent infringement by small/medium sized patent holders. The larger, established targets of these lawsuits consider these smallish companies “patent trolls.” They insist that the current legal system is enabling trolls to inflict legal expense as a form of extortion in exchange for license payments. On the other side of the equation is the small/medium sized patent holders that claim the present system is necessary to ensure a fair shake for all innovators, regardless of size or business. And, that the present system has existed for decades to the benefit of big business. 

That is, pure licensing entities characterize the debate as being about who they are instead of their conduct. In that sense it reminds me a lot about of the debate that raged in the wake of the O.J. Simpson trial. 

O.J. was considered a bad actor by many (pun intended). Yet, his ability to side-step the legal justice system was either heralded as confirmation that the system was finally balanced for everyone—regardless of race—or was a travesty of justice that led to a guilty man walking free. Those that believed O.J. was guilty focused on his conduct and what they insisted to be an incorrect outcome; others viewed his unlikely victory as a ringing endorsement of equal treatment (i.e., who he was). 

Criminal defendants enjoy a presumption of innocence, Patentees enjoy a presumption of validity. Criminal defendants must be found guilty beyond a reasonable doubt, Patents must be found invalid by clear and convincing evidence. Clearly, like O.J. …..some patents that are “guilty” of being invalid are roaming free; this is nothing new.  Like O.J., small entities would argue that large companies just don’t like the identity of the “bad actors” now gaming their system. In other words, they argue that the current patent reform debate is driven by the significant lobby interest of the status quo to the detriment of new entrants to the game. While I don’t believe that to be the case, the endless debate over defining what a “troll” is, rather than what they do, is feeding a growing legislative morass. 

The volume of patent suits has risen substantially over the past 10 years. It is the volume of bad patents being asserted that is truly new. It is not so much the new entrants to the game, or their size/nature of their business that is the real problem. Rather, it is the low quality patents that are unique to these cases.   

So, how do we balance the interests of maintaining an enforcement system for all players, large and small, but provide a disincentive for the truly abusive behavior? 

Simple, you take the ill-gotten weapons away, and quickly.  The AIA provided this very control in the form of PTAB proceedings that apply lower standards of patentability relative to the validity determination of the district courts. Remember that O.J. was ultimately tried in a civil court under different standards for wrongful death, that outcome was not so favorable for him. The PTAB is working in the same way. The truly “guilty” are not faring so well.

Senate Hearing To Spawn Even More Competing Bills?

Next Wednesday, March 18 the Senate Judiciary Committee will hold a hearing entitled The Impact of Abusive Patent Litigation Practices on the American Economy. An agenda is not yet available, however, I would expect that this discussion will be in stark contrast to many of the concepts proposed in last week’s STRONG Act.

Upcoming CLE

As to other upcoming events of note, tomorrow kick’s off the The 10th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office’s main campus in Alexandria Virginia (March 12-13th). This program provides a comprehensive view of USPTO practice, including application prosecution issues. Multiple segments are specifically directed to PTAB practice, including Lessons learned:Tips and Strategies for Practicing Before the PTAB. Other segments include the participation of several current PTAB judges.
Register (here) 

The most widely attended post-grant program of the year returns March 26th, Practicing Law Institute’s USPTO Post-Grant Patent Trials 2015. I am happy to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These full-day post-grant CLE programs are always the highlights of the CLE year.  (Register here)
Mar. 26, 2015 New York, NY
Apr. 17, 2015 San Francisco, CA (webcast available)

Hope to see you at one of these March programs.

Patentees: Be Careful What You Wish For…You Just Might Get It

Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees and bar associations have been shortsightedly advancing the notion that BRI should not be employed in the patent challenge proceedings of the AIA (Inter Partes Review (IPR) and Post Grant Review (PGR)). Instead, they urge that BRI claim construction be replaced with the claim construction practices of the district court (i.e., Philips v. AWH). This is because, they argue, the new AIA proceedings are more “adjudicative in nature” as compared to past patent reexamination practices…and amendment isn’t really possible.

Yet, if Philips were adopted by the PTAB, patentees would see little in terms of benefit. In fact, such a change would likely make matters far worse for patentees. 

First, there is a fundamental error in the assumption that the PTAB’s application of Philips will produce the same type of multi-sentence definitions common in district court proceedings.
We know that the USPTO does not ascribe such constrained definitions under a Philips analysis. For example, expired patents are already accorded a Philips construction in USPTO post grant proceedings. As someone that has been involved in many such cases, I can attest to the fact that the ability to rely upon prosecution history a bit more heavily under Philips, (the only practical difference between a BRI and a Philips analysis) rarely advances the needle.

So, what is the harm in simply making things consistent between the PTAB and the courts?

The AIA has changed the way patents are litigated. In the vast majority of litigations pursued post-AIA, an IPR challenge is becoming the rule. Since by definition IPRs must be pursued relatively early in the litigation calendar, the IPR Trial Order that includes claim construction will almost always issue in advance of a Markman Order. In fact, it will come a mere 6 months from filing of the petition. Currently, while IPR Trial Orders applying BRI can be helpful in calibrating the expectations of a patentee on their overall litigation outlook, such determinations are not binding on the court due to the difference in standards. Under a PTAB Philips analysis, it would be the same —in theory —and likely very helpful to the courts given the PTAB’s technical decision makers.

Think about it….a Philips construction can be obtained 6 months into a litigation, via the PTAB. With a Philips construction handed to it in short order, what court wouldn’t stay further proceedings under those circumstances, or at least find such a far more compelling proposition going forward?  On what basis would the courts ignore the PTAB construction now?  

Pending “reform” bills in both the House and Senate propose that the PTAB switch from BRI to Philips. The patentee lobby better think this through— and fast.

Misguided STRONG Act Would Undo Years of AIA Progress

Well, if you expected the Goodlatte Bill to sail through the House for swift passage through the Senate, forget about it. Hill chatter has indicated that the significant House support of the Bill has diminished since the last vote in 2013 (and rightfully so given the events of the past year). Perhaps of greater threat to the patent reform effort , however, is yesterday’s introduction of the “STRONG Act” on the Senate side (here), which makes clear that further patent reform is far from guaranteed for 2015. 

The STRONG Act, or “Support Technology and Research for Our Nation’s Growth Patents Act of 2015” removes the controversial fee shifting provision of the Goodlatte Bill (a key point of contention in past battles). More importantly, the Senate Bill adds a multitude of proposed changes to AIA trial proceedings that will have patent abusers dancing in the streets —the Bill is more aptly titled the “Support Trolls & Reverse Our Nation’s Progress under the AIA Act of 2015.” 

While this legislative grenade may not have much chance ever seeing the light of day, it is surprising that such misguided proposals would be seriously offered in the first instance.

Let’s go through some of the low-lights:

The STRONG Act attempts to tackle the difficulty in amending in AIA trial proceedings. (an effort already well underway at the PTAB). The bill seemingly proposes that the first amendment (if a reasonable number of claims) be granted as a matter of right. The Bill doesn’t specify who would be responsible for examining these amended claims, the very reason why the current amendment practice is by motion (i.e., burden is on movant to demonstrate patentability to an adjudicatory body).

Next, we get to the really fun stuff.  The Bill proposes that a Philips claim construction be applied in AIA trials along with a presumption of validity to issued claims, and a clear and convincing evidentiary standard for unpatentability. (for newly added claims existing standards would apply). That is, the PTAB will be applying two separate standards of patentability at the same time. Yes, you heard me right. Philips construction, presumption of validity, clear and convincing evidence. Sound familiar? 

So, basically, every reason patent challengers currently utilize the PTAB  would be taken away to align with district court practices. Sound good perennial patent troll targets?…but wait, there’s more.

Preliminary responses are proposed to include evidence, and if so, the petitioner can respond with a Reply.  Dont’ worry PTAB—sure its double, if not triple the work, and you will have about  a month left to read the entire record and issue a decision…details details. Oh, and the PTAB panel that issues the institution determination, forget about everything once the ink dries because a brand new panel has to conduct the actual trial. Administrative efficiency abounds! 

Lastly, and this is my favorite, if a reissue or reexamination is pending (where none of the heightened standards above would apply), there can be no IPR/PGR. So, if you are a patent troll, you simply file a Tanaka reissue before every licensing campaign. For the cost of a few thousand dollars a year you can effectively keep your patent out of the PTAB. What’s not to like about that type of legislative forethought?

There are other AIA related proposals in the Bill, such as limiting all AIA trials to those sued or charged with infringement, and adding a 1 year window to reexam filings for requsters served with a complaint for infringement…. basically the entire patent troll wish-list. These proposals would eviscerate 2+ years of progress under the AIA.  Patent challengers would be forced back to the friendlier standards of the reexamination system, an ex parte one at that. Yet, the AIA trial proceedings were designed to replace slow and unpredictable reexamination proceedings. AIA trials have been wildly successful in reducing the costs of litigation and eliminating problem patents.

The problem for patentees isn’t the PTAB, it’s the outdated practices of patentees that are broadly drafting patents without a care for validity. This is because surviving district court scrutiny is not a pressing concern given the protective standards applied. Bringing that deferential analysis to an expert agency, where amendment is encouraged for reasons of public policy, is nonsensical and would greatly fuel abusive litigation.

There is much wrong with the over-reaching of the Goodlatte Bill. But, if the Senate is trying to prove that it can come up with the most ill conceived ideas….game, set and match!

This mess will continue for the rest of 2015.

PTAB “Quick Fix” Changes Delayed to Q2, More Substantive Changes Expected Q3/Q4

In June of 2014 the USPTO issued a Request for Information in the Federal Register entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The notice posed 17 questions to the public. Since that time, the Office has considered the public feedback and has been working on two sets of changes to PTAB current trial practices. The first set of “quick-fix” changes, originally expected in January, is now slated for Q2 according to an announcement made at the most recent Patent Public Advisory Committee (PPAC) meeting. The second, more substantive rule package, is now slated for Q3/Q4 (likely Q4)

As the quick-fix changes will not go through Notice & Comment Rule Making, they will likely become effective after a 30 day period. The quick fix changes will liberalize current practice limitations, such as page limits. As these changes do not take away rights from the public, they are not subject to Notice & Comment Rule Making. The more substantive rule package will follow traditional Notice & Comment Rule Making and will address such things as claim interpretation of “soon to expire” patent claims.