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The USPTO published a final rule relating to AIA trial proceedings before the Patent Trial and Appeal Board (PTAB). The final rule addresses three aspects of AIA trial proceedings. 

First, the rule formally implements the PTAB’s current guidance concerning the scope of institution in view of the Supreme Court’s decision in SAS Institute. Under current practice, if the PTAB institutes review, trial proceeds on all challenged claims and on all asserted grounds of unpatentability presented in the petition. The final rule formally implements this practice into the regulation.  

Second, the final rule conforms the regulation to the current practice of allowing for automatic sur-replies to principal briefs. The final rule formally implements the practice of providing patent owners with the opportunity to file a sur-reply to a petitioner reply without any need for prior authorization from the Board. 

Third, the final rule eliminates the presumption that a genuine issue of material fact created by patent owner’s testimonial evidence will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review. Under the previous rule, the presumption would arise in situations where a patent owner submits testimonial evidence with its patent owner preliminary response that creates a genuine issue of material fact in view of testimonial evidence submitted with the petition. The USPTO explained that the rule change is intended to “remove[] any bias or appearance of bias in favor of petitioner, and provide[] a balanced approach to ensure that all testimonial evidence submitted by the parties is fairly considered.”

Under the previous rule, a patent owner might not have been inclined to submit pre-institution testimony out of concern that the testimony could trigger the presumption favoring the petitioner. With the removal of the presumption, patent owners should consider whether submission of testimonial evidence at the institution stage might be advantageous in view of the overall IPR/litigation strategy.

The final rule is a part of a continued effort by the USPTO to provide guidance and promote predictability in AIA trial procedure. The final rule applies to all IPR and PGR petitions filed on or after January 8, 2021. 

More information concerning PTAB trial practice and procedure is available at the Buchanan PTAB Report.