PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence

 
CONTENT
Federal Register, Volume 85 Issue 102 (Wednesday, May 27, 2020)
[Federal Register Volume 85, Number 102 (Wednesday, May 27, 2020)]
[Proposed Rules]
[Pages 31728-31732]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-10131]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2019-0024]
RIN 0651-AD40
PTAB Rules of Practice for Instituting on All Challenged Patent
Claims and All Grounds and Eliminating the Presumption at Institution
Favoring Petitioner as to Testimonial Evidence
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') proposes changes to the rules of practice for instituting
review on all challenged claims or none in inter partes review
(``IPR''), post-grant review (``PGR''), and the transitional program
for covered business method patents (``CBM'') proceedings before the
Patent Trial and Appeal Board (``PTAB'' or ``Board'') in accordance
with SAS Institute Inc. v. Iancu (``SAS''). Consistent with SAS, the
Office also proposes changes to the rules of practice for instituting a
review on all grounds of unpatentability for the challenged claims that
are asserted in a petition. Additionally, the Office proposes changes
to the rules to conform to the current standard practice of providing
sur-replies to principal briefs and providing that a patent owner
response and reply may respond to a decision on institution. The Office
further proposes a change to eliminate the presumption that a genuine
issue of material fact created by the patent owner's testimonial
evidence filed with a preliminary response will be viewed in the light
most favorable to the petitioner for purposes of deciding whether to
institute a review.
DATES: Comment Deadline Date: The Office solicits comments from the
public on this proposed rulemaking. Written comments must be received
on or before June 26, 2020 to ensure consideration.
ADDRESSES: Comments should be sent by email addressed to:
[email protected].
 Comments may also be sent via the Federal eRulemaking Portal at
http://www.regulations.gov. See the Federal eRulemaking Portal website
for additional instructions on providing comments via the Federal
eRulemaking Portal. All comments submitted directly to the USPTO or
provided on the Federal eRulemaking Portal should include the docket
number (PTO-P-2019-0024).
 Comments may also be submitted by postal mail addressed to: Mail
Stop Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Michael Tierney, Vice Chief Administrative Patent Judge.
 Although comments may be submitted by postal mail, the Office
prefers to receive comments by email to more easily share all comments
with the public. The Office prefers the comments to be submitted in
plain text but also accepts comments submitted in searchable
ADOBE[supreg] portable document format (PDF) or MICROSOFT WORD[supreg]
format. Comments not submitted electronically should be submitted on
paper in a format that accommodates digital scanning into ADOBE[supreg]
PDF.
 The comments will be available for public inspection at the Patent
Trial and Appeal Board, located in Madison East, Ninth Floor, 600
Dulany Street, Alexandria, Virginia. Comments also will be available
for viewing via the Office's website, https://go.usa.gov/xXXFW, and on
the Federal eRulemaking Portal. Because comments will be made available
for public inspection, information that the submitter does not desire
to be made public, such as an address or phone number, should not be
included.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Vice Chief
Administrative Patent Judge, by telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary
 Purpose: The proposed rules would amend the rules of practice for
IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-
Smith America Invents Act (``AIA'') providing for trials before the
Office.
 The U.S. Supreme Court held in SAS that a decision to institute an
IPR under 35 U.S.C. 314 may not institute on fewer than all claims
challenged in a petition. See SAS Institute Inc. v. Iancu, 138 S. Ct.
1348 (2018). The Court held that the Office only has the discretion to
institute on all of the claims challenged in the petition or to deny
the petition. Previously, the Board exercised discretion to institute
an IPR, PGR, or CBM on all or some of the challenged claims and on all
or some of the grounds of unpatentability asserted in a petition. For
example, the Board exercised discretion to authorize a review to
proceed on only those claims and grounds for which the required
threshold had been met, thus narrowing the issues for efficiency in
conducting a proceeding.
 In light of SAS, the Office provided guidance that, if the Board
institutes a trial under 35 U.S.C. 314 or 324, the Board will institute
on all claims and all grounds included in a petition of an IPR, PGR, or
CBM. To implement this practice in the regulation, the first proposed
change would amend the rules of practice for instituting an IPR, PGR,
or CBM to require institution on all challenged claims (and all of the
grounds) presented in a petition or on none. Under the amended rule, in
all pending IPR, PGR, and CBM proceedings before the Office, the Board
would either institute review on all of the challenged claims and
grounds of unpatentability presented in the petition or deny the
petition.
 The second proposed change would amend the rules of practice to
conform the rules to certain standard practices before the PTAB in IPR,
PGR, and CBM
[[Page 31729]]
proceedings. Specifically, in this notice of proposed rulemaking, the
Office proposes to amend the rules to set forth the briefing
requirements of sur-replies to principal briefs and to provide that a
reply may respond to a decision on institution.
 Finally, the Office proposes to amend the rules to eliminate the
presumption in favor of the petitioner for a genuine issue of material
fact created by testimonial evidence submitted with a patent owner's
preliminary response when deciding whether to institute an IPR, PGR, or
CBM review. As with all other evidentiary questions at the institution
phase, the Board will consider the evidence to determine whether the
petitioner has met the applicable standard for institution of the
proceeding.
 Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background
 On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)), and within one year, the Office implemented
rules to govern Office practice for AIA trials, including IPR, PGR,
CBM, and derivation proceedings pursuant to 35 U.S.C. 135, 316, and 326
and AIA 18(d)(2). See Rules of Practice for Trials before the Patent
Trial and Appeal Board and Judicial Review of Patent Trial and Appeal
Board Decisions, 77 FR 48612 (Aug. 14, 2012); Changes to Implement
Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Patents, 77 FR 48680
(Aug. 14, 2012); and Transitional Program for Covered Business Method
Patents--Definitions of Covered Business Method Patent and
Technological Invention, 77 FR 48734 (Aug. 14, 2012). Additionally, the
Office published a Patent Trial Practice Guide to advise the public on
the general framework of the regulations, including the structure and
times for taking action in each of the new proceedings. See Office
Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012). This guide
has been periodically updated. See Office Patent Trial Practice Guide,
August 2018 Update, 83 FR 39989 (Aug. 13, 2018); and Office Patent
Trial Practice Guide, July 2019 Update, 84 FR 33925 (July 16, 2019). A
consolidated Trial Practice Guide, incorporating updates to the
original August 2012 Practice Guide, was recently published in November
2019. See Consolidated Trial Practice Guide, 84 FR 64280 (Nov. 21,
2019).
 Previously, under 37 CFR 42.108(a) and 42.208(a), the Board
exercised the discretion to institute an IPR, PGR, or CBM on all or
some of the challenged claims and on all or some of the grounds of
unpatentability asserted for each claim presented in a petition. For
example, the Board exercised the discretion to authorize a review to
proceed on only those claims and grounds for which the required
threshold has been met, narrowing the issues for efficiency.
 The U.S. Supreme Court held in SAS, however, that a decision to
institute an IPR review under 35 U.S.C. 314 may not institute on fewer
than all claims challenged in a petition. The Court held that the
Office only has the discretion to institute on all of the claims
challenged in the petition or to deny the petition. The Office posted
guidance on the Impact of SAS on AIA trial proceedings at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. In light of SAS, the
guidance states that, if the Board institutes a trial under 35 U.S.C.
314 or 324, the Board will institute on all claims and all grounds
included in a petition of an IPR, PGR, or CBM. The guidance provides
that ``the PTAB will institute as to all claims or none,'' and ``[a]t
this time, if the PTAB institutes a trial, the PTAB will institute on
all challenges raised in the petition.'' Id.
 Consistent with SAS and the Office's guidance, this proposed
rulemaking would revise Sec. Sec. 42.108(a) and 42.208(a) to provide
for instituting an IPR, PGR, or CBM on all challenged claims or none.
This proposed rulemaking would also revise these rules for instituting
a review on all of the grounds of unpatentability for the challenged
claims that are presented in a petition. In all pending IPR, PGR, and
CBM proceedings before the Office, the Board would either institute on
all of the challenged claims and on all grounds of unpatentability
asserted for each claim or deny the petition.
 In addition, consistent with the Office Patent Trial Practice
Guide, August 2018 Update, the Office is proposing to amend Sec. Sec.
42.23, 42.24, 42.120, and 42.220 to permit (1) replies and patent owner
responses to address issues discussed in the institution decision, and
(2) sur-replies to principal briefs (i.e., to a reply to a patent owner
response or to a reply to an opposition to a motion to amend). 83 FR
39989; the Office Patent Trial Practice Guide, August 2018 Update is
available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf; see id. at 14-15.
 As noted in the August 2018 Practice Guide Update, in response to
issues arising from SAS, the petitioner is permitted in its reply brief
to address issues discussed in the institution decision. Similarly, the
patent owner is permitted to address the institution decision in its
response and sur-reply, if necessary, to respond to the petitioner's
reply. However, the sur-reply may not be accompanied by new evidence
other than deposition transcripts of the cross-examination of any reply
witness. Sur-replies only respond to arguments made in reply briefs,
comment on reply declaration testimony, or point to cross-examination
testimony. A sur-reply also may address the institution decision if
necessary to respond to the petitioner's reply. This sur-reply practice
essentially replaces the previous practice of filing observations on
cross-examination testimony.
 In 2012, the Office also promulgated Sec. Sec. 42.107(c) and
42.207(c), which initially included a prohibition against a patent
owner filing new testimony evidence with its preliminary response. In
particular, these rules stated: ``No new testimonial evidence. The
preliminary response shall not present new testimony evidence beyond
that already of record, except as authorized by the Board.'' 37 CFR
42.107(c) and 42.207(c) (2012).
 In April 2016, after receiving comments from the public and
carefully reviewing them, the Office promulgated a rule to allow new
testimonial evidence to be submitted with a patent owner's preliminary
response. Amendments to Rules of Practice for Trials Before the Patent
Trial and Appeal Board, 81 FR 18750 (April 1, 2016). The Office also
amended the rules to provide a presumption in favor of the petitioner
for a genuine issue of material fact created by such testimonial
evidence solely for purposes of deciding whether to institute an IPR,
PGR, or CBM review. Id. at 18755-57.
 Stakeholder feedback received in party and amicus briefing as part
of the Precedential Opinion Panel (POP) review in Hulu, LLC v. Sound
View Innovations, LLC, Case IPR2018-01039, Paper 15 (PTAB Apr. 3, 2019)
(granting POP review), indicated that the rule has caused some
confusion at the institution stage for AIA proceedings. For example,
certain stakeholders have indicated that the presumption in favor of
the petitioner for genuine issues of material fact created by patent
owner testimonial evidence also creates a presumption in favor of the
petitioner for questions relating to whether a document is a printed
publication. Additionally, the Office has concerns that the presumption
in favor of the petitioner may be viewed as discouraging patent
[[Page 31730]]
owners from filing testimonial evidence with their preliminary
responses, as some patent owners believe that such testimony will not
be given any weight at the time of institution.
 Section 314(a) of 35 U.S.C. provides that ``[t]he Director may not
authorize an inter partes review to be instituted unless the Director
determines that the information presented in the petition . . . and any
response . . . shows that there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.'' 35 U.S.C. 314(a). Thus, the statute
provides that a petitioner is required to present evidence and
arguments sufficient to show that it is reasonably likely that it will
prevail in showing the unpatentability of the challenged claims. Hulu,
LLC v. Sound View Innovations LLC, Case IPR2018-01039, Paper 29 at 12-
13 (PTAB Dec. 20, 2019) (citing 35 U.S.C. 312(a)(3), 314(a)). For a
post-grant review proceeding, the standard for institution is whether
it is ``more likely than not'' that the petitioner would prevail at
trial. See 35 U.S.C. 324(a). In determining whether the information
presented in the petition meets the standard for institution, the PTAB
considers the totality of the evidence currently in the record. See
Hulu, Paper 29 at 3, 19.
 In this notice of proposed rulemaking, the Office proposes to amend
the rules of practice to eliminate the presumption in favor of the
petitioner for a genuine issue of material fact created by testimonial
evidence submitted with a patent owner's preliminary response when
deciding whether to institute an IPR, PGR, or CBM review. Thus,
consistent with the statutory framework, any testimonial evidence
submitted with a patent owner's preliminary response will be taken into
account as part of the totality of the evidence. As part of the
Office's continuing efforts to improve AIA proceedings, the Office
requests input from the public on the proposed rule changes in this
notice of proposed rulemaking and on how the Office should implement
the changes if adopted. For example, as to the implementation, the
Office may apply any rule changes, if adopted, to all pending IPR, PGR,
and CBM proceedings in which a patent owner's preliminary response is
filed on or after the effective date.
Discussion of Specific Rules
 Title 37 of the Code of Federal Regulations, part 42, is proposed
to be amended as follows:
Section 42.23
 Section 42.23 is proposed to be amended to permit patent owners to
file sur-replies to principal briefs (i.e., to a reply to a patent
owner response or to a reply to an opposition to a motion to amend). In
particular, the title and Sec. 42.23(a) are proposed to be amended to
add ``sur-replies'' so that the rule would be amended as follows:
``42.23 Oppositions, replies, and sur-replies. (a) Oppositions,
replies, and sur-replies . . . and, if the paper to which the
opposition, reply, or sur-reply . . .''
 Paragraph (b) of Sec. 42.23 is proposed to be amended to permit
petitioners to address issues discussed in the institution decision in
the reply briefs. Specifically, Sec. 42.23(b) is proposed to be
amended to replace the second sentence with: ``A reply may only respond
to arguments raised in the corresponding opposition, patent owner
preliminary response, patent owner response, or decision on
institution.'' Paragraph (b) of Sec. 42.23 is further proposed to be
amended to address the content of a sur-reply by adding the following
third sentence: ``A sur-reply may only respond to arguments raised in
the corresponding reply.''
Section 42.24
 The title and Sec. 42.24(c) are proposed to be amended to provide
for word count limit for sur-replies so that they would be amended as
follows: ``Sec. 42.24 Type-volume or page limits for petitions,
motions, oppositions, replies, and sur-replies'' and ``(c) Replies and
Sur-replies. The following word counts or page limits for replies and
sur-replies apply . . .''
 Paragraph (c) of Sec. 42.24 is also proposed to be amended to add
a new paragraph (4) that would limit sur-replies to patent owner
responses to petitions to 5,600 words.
Sections 42.108 and 42.208
 Each of Sec. Sec. 42.108(a) and 42.208(a) is proposed to be
amended to state that when instituting inter partes review or post-
grant review, the Board will authorize the review to proceed on all of
the challenged claims and on all grounds of unpatentability asserted
for each claim.
 Each of Sec. Sec. 42.108(b) and 42.208(b) is proposed to be
amended to state that at any time prior to institution of inter partes
review or post-grant review, the Board may deny all grounds for
unpatentability for all of the challenged claims. Denial of all grounds
is a Board decision not to institute inter partes or post-grant review.
 The second sentence in each of Sec. Sec. 42.108(c) and 42.208(c)
is proposed to be amended to delete the phrase ``but a 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 [a] review.'' Therefore, the second
sentence in each of Sec. Sec. 42.108(c) and 42.208(c) would state:
``The Board's decision will take into account a patent owner
preliminary response where such a response is filed, including any
testimonial evidence.''
Sections 42.120 and 42.220
 The first sentence of each of Sec. Sec. 42.108(a) and 42.208(a) is
proposed to be replaced with the following: ``(a) Scope. A patent owner
may file a response to the petition or decision on institution.''
Rulemaking Considerations
 A. Administrative Procedure Act (APA): This proposed rule would
revise the rules relating to Office trial practice for IPR, PGR, and
CBM proceedings. The changes being proposed in this notice of proposed
rulemaking would not change the substantive criteria of patentability.
These proposed changes involve rules of agency procedure and
interpretation. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199,
1204 (2015) (Interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers.'')
(citation and internal quotation marks omitted); Bachow Commc'ns, Inc.
v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules governing an
application process are procedural under the Administrative Procedure
Act.); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (Rules for handling appeals were procedural where they did not
change the substantive requirements for reviewing claims.); Nat'l Org.
of Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (Rule that clarifies interpretation of a
statute is interpretive.); and JEM Broadcasting Co. v. F.C.C., 22 F.3d
320, 328 (DC Cir. 1994) (Rules are not legislative because they do not
``foreclose effective opportunity to make one's case on the merits.'').
 Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Perez, 135 S. Ct. 1199, 1206 (Notice-and-comment procedures are
required neither when an agency ``issue[s] an initial interpretive
rule'' nor ``when it amends or repeals that interpretive rule.'');
Cooper Techs. Co. v. Dudas, 536 F.3d
[[Page 31731]]
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), do not require notice and comment rulemaking for
``interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice'') (quoting 5 U.S.C.
553(b)(3)(A)).
 The Office, nevertheless, is publishing this proposed rule for
comment to seek the benefit of the public's views on the Office's
proposed changes as set forth herein.
 B. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that changes proposed in this notice
of proposed rulemaking will not have a significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
 The changes proposed in this document are to revise certain trial
practice procedures before the Board in light of the Supreme Court's
ruling in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), that a
decision to institute an IPR under 35 U.S.C. 314 may not institute on
fewer than all claims challenged in a petition. In accordance with that
ruling, the Office proposes changes to the rules of practice for
instituting review on all challenged claims or none in inter partes
review (``IPR''), post-grant review (``PGR''), and the transitional
program for covered business method patents (``CBM'') proceedings
before the Patent Trial and Appeal Board (``PTAB'' or ``Board''). The
Office also proposes changes to the rules of practice for instituting a
review on all grounds of unpatentability for the challenged claims that
are asserted in a petition. Additionally, the Office proposes changes
to the rules to conform to the current standard practice of providing
sur-replies to principal briefs and providing that a patent owner
response and reply may respond to a decision on institution. The Office
further proposes a change to eliminate the presumption that a genuine
issue of material fact created by the patent owner's testimonial
evidence filed with a preliminary response will be viewed in the light
most favorable to the petitioner for purposes of deciding whether to
institute a review. These changes are procedural in nature, and any
requirements resulting from these proposed changes are of minimal or no
additional burden to those practicing before the Board.
 For the foregoing reasons, the proposed changes in this notice of
proposed rulemaking would not have a significant economic impact on a
substantial number of small entities.
 C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
 D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the Office has, to the extent feasible and
applicable: (1) Made a reasoned determination that the benefits justify
the costs of the rule; (2) tailored the rule to impose the least burden
on society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided online access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
 E. Executive Order 13771 (Reducing Regulation and Controlling
Regulatory Costs): This proposed rule is not expected to be an
Executive Order 13771 (Jan. 30, 2017) regulatory action because this
proposed rule is not significant under Executive Order 12866 (Sept. 30,
1993).
 F. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
 G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
 H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
 I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
 J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
 K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
notice of proposed rulemaking are not expected to result in an annual
effect on the economy of $100 million or more, a major increase in
costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this proposed
rulemaking is not a ``major rule'' as defined in 5 U.S.C. 804(2).
 L. Unfunded Mandates Reform Act of 1995: The proposed changes set
forth in this notice of proposed rulemaking do not involve a federal
intergovernmental mandate that will result in the expenditure by state,
local, and tribal governments, in the aggregate, of $100 million (as
adjusted) or more in any one year, or a federal private-sector mandate
that will result in the expenditure by the private sector of $100
million (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
 M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
 N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement
[[Page 31732]]
Act of 1995 (15 U.S.C. 272 note) are not applicable because this
rulemaking does not contain provisions that involve the use of
technical standards.
 O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking does not involve an information
collection requirement that is subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501-3549). This rulemaking does not add any additional
information requirements or fees for parties before the Board.
Therefore, the Office is not resubmitting information collection
packages to OMB for its review and approval because the revisions in
this rulemaking do not materially change the information collections
approved under OMB control number 0651-0069.
 Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to, a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
 Administrative practice and procedure, Inventions and patents,
Lawyers.
 For the reasons set forth in the preamble, the Office proposes to
amend part 42 of title 37 as follows:
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for 37 CFR part 42 continues to read as
follows:
 Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326; Pub. L. 112-129, 125 Stat. 284; and Pub. L. 112-274, 126
Stat. 2456.
0
2. Revise Sec. 42.23 to read as follows:
Sec. 42.23 Oppositions, replies, and sur-replies.
 (a) Oppositions, replies, and sur-replies must comply with the
content requirements for motions and, if the paper to which the
opposition, reply, or sur-reply is responding contains a statement of
material fact, must include a listing of facts that are admitted,
denied, or cannot be admitted or denied. Any material fact not
specifically denied may be considered admitted.
 (b) All arguments for the relief requested in a motion must be made
in the motion. A reply may only respond to arguments raised in the
corresponding opposition, patent owner preliminary response, patent
owner response, or decision on institution. A sur-reply may only
respond to arguments raised in the corresponding reply.
0
3. Amend Sec. 42.24 by revising the section heading and paragraph (c)
introductory text and adding paragraph (c)(4) to read as follows:
Sec. 42.24 Type-volume or page limits for petitions, motions,
oppositions, replies, and sur-replies.
* * * * *
 (c) Replies and sur-replies. The following word counts or page
limits for replies and sur-replies apply and include any statement of
facts in support of the reply. The word counts or page limits do not
include a table of contents; a table of authorities; a listing of facts
that are admitted, denied, or cannot be admitted or denied; a
certificate of service or word count; or an appendix of exhibits.
* * * * *
 (4) Sur-replies to replies to patent owner responses to petitions:
5,600 words.
* * * * *
0
4. Revise Sec. 42.108 to read as follows:
Sec. 42.108 Institution of inter partes review.
 (a) When instituting inter partes review, the Board will authorize
the review to proceed on all of the challenged claims and on all
grounds of unpatentability asserted for each claim.
 (b) At any time prior to a decision on institution of inter partes
review, the Board may deny all grounds for unpatentability for all of
the challenged claims. Denial of all grounds is a Board decision not to
institute inter partes review.
 (c) Inter partes review shall not be instituted unless the Board
decides that the information presented in the petition demonstrates
that there is a reasonable likelihood that at least one of the claims
challenged in the petition is unpatentable. The Board's decision will
take into account a patent owner preliminary response where such a
response is filed, including any testimonial evidence. A petitioner may
seek leave to file a reply to the preliminary response in accordance
with Sec. Sec. 42.23 and 42.24(c). Any such request must make a
showing of good cause.
0
5. Amend Sec. 42.120 by revising paragraph (a) to read as follows:
Sec. 42.120 Patent owner response.
 (a) Scope. A patent owner may file a response to the petition or
decision on institution. A patent owner response is filed as an
opposition and is subject to the page limits provided in Sec. 42.24.
* * * * *
0
6. Amend Sec. 42.208 by revising paragraphs (a), (b), and (c) to read
as follows:
Sec. 42.208 Institution of post-grant review.
 (a) When instituting post-grant review, the Board will authorize
the review to proceed on all of the challenged claims and on all
grounds of unpatentability asserted for each claim.
 (b) At any time prior to institution of post-grant review, the
Board may deny all grounds for unpatentability for all of the
challenged claims. Denial of all grounds is a Board decision not to
institute post-grant review.
 (c) Post-grant review shall not be instituted unless the Board
decides that the information presented in the petition demonstrates
that it is more likely than not that at least one of the claims
challenged in the petition is unpatentable. The Board's decision will
take into account a patent owner preliminary response where such a
response is filed, including any testimonial evidence. A petitioner may
seek leave to file a reply to the preliminary response in accordance
with Sec. Sec. 42.23 and 42.24(c). Any such request must make a
showing of good cause.
* * * * *
0
7. Amend Sec. 42.220 by revising paragraph (a) to read as follows:
Sec. 42.220 Patent owner response.
 (a) Scope. A patent owner may file a response to the petition or
decision on institution. A patent owner response is filed as an
opposition and is subject to the page limits provided in Sec. 42.24.
* * * * *
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2020-10131 Filed 5-26-20; 8:45 am]
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