This column is about shows that because of the wording of regulations imposing the duty of candor in IPR, parties — parties — in an IPR owe an extremely broad duty of candor. This ain’t your grandpa’s Rule 56.
Here’s the regulation, 37 C.F.R. 42.11: “Parties and individuals involved in the proceeding have a duty of candor and good faith to the [USPTO] during the course of a proceeding.”
There’s a lot of unpacking to do when that rule is applied, but one key different between 42.11 and 1.56 is who is covered by the obligation. Under 1.56 it is, of course, those persons substantively involved in prosecution. Now look at 42.11: parties. And persons “involved.” Obviously, “persons involved” is broader than persons substantively involved, but parties means, one would think, the party and everyone in it. That is an extraordinarily broad scope.
By the way if you compare 42.11 to the narrower “inconsistent information must be disclosed” obligation in IPR in 42.51, it applies to a different set of people and does not include parties, so one would think these words were deliberately chosen and have different meaning.
Finally, there are proposed amendments in the works which, I heard when I was at the USPTO a couple weeks ago, are coming “soon.” There’s more about that here, and I don’t know if it will narrow the scope of who is covered, if anything, the proposed amendment to 42.10 adding a certification by the lawyer may make it clear that a lawyer has a duty to investigate everything known to a “party” to an IPR.
A PTO official said to me after my talk that trying to think about IPR with an overlay of prosecution will do nothing but harm. He’s right.