PGR, IPR, and CBMPR Rules Amended Effective May 2, 2016


Rule 37 CFR 42.11 has been amended to provide for sanctions against parties and attorneys:



Pages Limits

The 60 page limit for a IPR Petiton has been replaced with a limit of 14,000 words (37 CFR 42.24(a)(i), and 60 page limit of the Patent Owner Preliminary Response, and Response are likewise replaced with a 14,000 word limit (37 CFR 42.24(b)(1), (2)).  The 80 page limit for a PGR or CBMPR Petition has been replaced with a limit of 18,700 words (37 CFR 42.24(a)(ii), (iii)), and the 80 page limit of the Patent Owner Preliminary Response, and Response are likewise replaced with a 18,700 word limit (37 CFR 42.24(b)(1), (2)).. These word counts do not include the table of contents, table of authorities, grounds for standing under § 42.104, § 42.204, or § 42.304, mandatory notices under § 42.8, a certificate of service or word count, or appendix of exhibits or claim listing.  Where a paper is limited by a word count, the paper must include a certification as to the word count

The page limit for motions to amend is bumped to 25 pages (37 CFR 42.24(a)(vi)), as is the Petitioner’s Opposition (37 CFR 42.24(b)(d), and the reply to an opposition to a motion to amend is bumped to 12 pages (37 CFR 42.24(c)(3)).


You now have to serve your demonstrative exhibits two days earlier — seven days before oral argument.  37 CFR 42.70(b).


The USPTO still insists on applying BRI to all claims, in all proceedings, except if the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition, and the Patent Owner makes a timely motion.  37 CFR 42.100(b); 37 CFR 42.200(b); 37 CFR 42.300(b).

Bar Against Testimony in a Preliminary Response Removed

The bar against the submission of testimony to support a Preliminary Response has been removed.  37 CFR 42.107(c) and 37 CFR 42.207(c) have been removed.  While testimony can be submitted with a Preliminary Response, any genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.  37 CFR 42.108(c);  37 CFR 42.208(c)


Posted in IPR

Estoppel Does Not Apply to Uninstituted Grounds in an IPR

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., [2015-1116, -1119] (March 23, 2016), the Federal Circuit affirmed in part, vacated-in-part, and remanded the USPTO’s final written decision regarding claims 1-21 of U.S. Patent No. 7,806,360 relating to  “creels” for supplying yarn and other stranded materials to a manufacturing process.

Shaw challenged the Board’s institution decision that refused to consider one of the proffered grounds of unpatentability as redundant.  The Federal Circuit noted that the Board did not consider the substance of the cited reference, or compare it to the other cited art, nor did the Board make specific findings that the grounds overlapped or even involved overlapping arguments. Instead the Board merely denied the ground as redundant.  While pointing out that it may not agree with the Board’s handling of the Petition, or that the Board’s handling was more efficient, the Federal Circuit said it had no authority to review the Board’s decision not to institute.  Shaw persisted and requested a writ of mandamus, but the Federal Circuit found that Shaw had not shown it was entitled this extraordinary remedy, rejecting the Shaw’s argument that it had no other adequate means to attain the desired relief, because it would be estopped to raise the redundant grounds that the Board refused to hear.

The Federal Circuit held that §315(e) would not estop Shaw from re-raising the redundant grounds in either the PTO or the district courts. The Federal Circuit said that both parts of § 315(e) create estoppel for arguments “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Shaw raised the redundant ground in its petition for IPR, but the PTO denied the petition as to that ground, thus no IPR was instituted on that ground, and the IPR does not begin until it is instituted.

This language does not appear to be limited to grounds that are not instituted for redundancy, and thus would also apply to grounds that the Board finds did not meet the  or the “likelihood of success” and the more rigorous “more likely than not” standards of IPR and PGR proceedings.

It is conceivable that the Federal Circuit could later distinguish between grounds rejected on their merits and grounds merely found redundant, but their holding that there is no estoppel on grounds that are not instituted appears straight-forward and unambiguous.  Thus a petitioner may be able to preserve grounds by mentioning them, but not adequately supporting them, the resulting denial of institution protecting the petitioner from any estoppel effects.

Finally, the Federal Circuit held that it lacked authority to review the Board’s decision that the petition was not barred pursuant to 35 U.S.C. §315(b).  Leaving the Board’s  curious rule that a complaint served but later dismissed does not count as a complaint, completely unreviewable.



PTAB Can’t Rely on Anticipation Argument first Made during the Oral Hearing

In Dell Inc, v, Acceleron, LLC, [2015-1513, -1514](March 15, 2016) the Federal Circuit affirmed the confirmation of claims, but remanded the cancellation of two claims for reconsideration in view of corrected claim construction.  At issue was the claim language “a microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.”  The Board concluded, that it is enough that there be an ethernet path that would provide a connection for polling if the microcontroller were configured for, and engaged in, remote polling of the three identified modules.  The Federal Circuit held that this construction runs counter to the claimconstruction principle that meaning should be given to all of a claim’s terms, denying any substantial meaning to “remotely poll.”

Also at issue was the anticipation of the claim limitation “caddies” which the Federal Circuit found was first identified in the reference during the oral argument before the Board.  The Federal Circuit vacated the finding of anticipation because the Board denied the patent owner notice and a fair opportunity to respond to this basis of cancellation.  The Federal Circuit explained that a patent owner is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection.  The Federal Circuit said that for a formal adjudication like the inter partes, the APA imposes particular requirements on the PTO. The agency must timely inform the patent owner of the matters of fact and law asserted (5 U.S.C. § 554(b)(3)), must provide all interested parties opportunity for the submission and consideration of facts and arguments and hearing and decision on notice, (5 U.S.C. § 554(c)), and must allow a party to submit rebuttal evidence  as may be required for a full and true disclosure of the facts, (5 U.S.C. § 556(d)). The Federal Circuit noted that the PTO has advised participants in its Board proceedings that, at oral argument, a party may only present arguments relied upon in the papers previously submitted, and that no new evidence or arguments may be presented at the oral argument.  However, the Federal Circuit found that the Board denied the patent owner its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after the patent owner could meaningfully respond.