Revision to IPR Duty of Candor: Broadening Duty?

The USPTO today announced it was amending 37 CFR 42.11 to include a Rule 11 type certification.  I see a lot of issues but one relates to a post earlier last month I made here.

As the final rule now provides, with the key new language underlined:

(a) Duty of candor. Parties and individuals involved in the proceeding have a duty of candor and good faith to the Office during the course of a proceeding.

(b) Signature. Every petition, response, written motion, and other paper filed in a proceeding must comply with the signature requirements set forth in § 11.18(a) of this chapter. The Board may expunge any unsigned submission unless the omission is promptly corrected after being called to the counsel’s or party’s attention.

(c) Representations to the Board. By presenting to the Board a petition, response, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney, registered practitioner, or unrepresented party attests to compliance with the certification requirements under § 11.18(b)(2) of this chapter.

In turn, Section 11.18(b)(2) provides:

 To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

When you combine this with some other statements made by the USPTO (and PTAB cases quoted in the comment) in the announcement of the final rule, it is also clear that a patentee seeking to substitute an amended claim is representing that the proposed claim is patentable over all art known to it (query whether “prior art” includes sales?).  For example, the USPTO wrote:

[A] patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, which include: (a.) Any material art in the prosecution history of the patent; (b.) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and (c.) any material art of record in any other proceeding before the Office involving the patent. Id. at 2. The Patent Owner must also distinguish over any art provided in light of a patent owner’s duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced.

Where I end up is that this rule on its face is clearly broader than Rule 56:  the lawyer must certify that, based upon a reasonable investigation, that a substitute claim is patentable over all prior art known to a party or “persons involved” in an IPR.  Again, what about a substitute claim known to be unpatentable over non-art information?

13 thoughts on “Revision to IPR Duty of Candor: Broadening Duty?

  1. 2

    Not broadening, just adopting a body of case law on Rule 11 for consistency. Duty of Candor and 11.18 are not new.

    1. 2.1

      No, wildly broadened compared to Rule 56. Wildly broadened. Unimaginably so: under Rule 56 there is no duty to search for information known to someone not substantively involved. That’s settled. Here a lawyer now certifies that to the best of his knowledge based upon reasonable inquiry no one in the “party” or any person “involved” knows material prior art (and maybe more?). Unbelievably broad.

      1. 2.1.1

        How do you get to “no one in the “party” or any person “involved” knows” [which is not in this Rule] from what the Rule actually says, which is “The Patent Owner must also distinguish over any art provided in light of a patent owner’s duty of candor,.” [A duty of candor that already existed.] ?

        As for submitting a proposed new claim that is KNOWN by the submitter to be bared by prior art that is not in a prior patent or publication, that could be grounds for both inequitable conduct and PTO disciplinary action whether in an IPR or normal application prosecution.
        The fact that something like 80% of all IPRs have parallel litigation going on the subject patent provides IC discovery exposure opportunities.

        If one is concerned about a missreading of this rule could they not ask the Office of the Solicitor for an advisory option?

  2. 1

    I will ask (again) – just to be consistent (and because I have not yet seen an answer)…

    How is this “enforceable” against the petitioner? You know, the other party that is NOW brought into the mix (I do “get” that the patentee side is expanded, which has been the main focus of these posts, but that is the far less interesting aspect to me, as “expanded” does not compare to the “completely added” aspect)

    1. 1.1

      I don’t understand. A rule is enforceable because of someone being sued in court, for example, whether they “want” to be there or not, and a petitioner by definition wants to be in IPR, so… I’m lost…

      1. 1.1.1

        I do not understand what you don’t understand.

        I have spelled out the distinction and focused on the other party pretty clearly.

        See also the comments at link to patentlyo.com

        I “get” that for those on the patent side, the “scope” of involvement is greater – but I am not talking about that side of the contest.

        Think “Kyle Bass” – and what the attorney representing him NOW needs to go to match the side of the patent holder.

        “Wanting to be there” is a meaningless non-sequitur. Having to do the due diligence – and the SCOPE of that effort – for BOTH sides means a change in scope for the patent holder side (sure, the item I admit to and am not talking about), but that SAME “scope” now applies to the side challenging the patent.

      2. 1.1.2

        David,

        Anon beat me to it with his comment, but I am too lazy to rewrite mine.

        I think anon is trying to point out an asymmetry with respect to the petitioner. This seems to be modeled on FRCP Rule 11 where either party can be sanctioned including payments to the court or other party. Later discovered violations of Rule 56 by a patentee can jeopardize the validity of an ensuing patent and, in the same way, violation of these rules by a patentee could jeopardize the validity of surviving claims. Violation of this rule by the petitioner would have little effect if all claims survive intact.

        But, what happens if some do not and it is later discovered that the petitioner violated these rules. Of course, discovery will probably be needed. I thinks these rules greatly enlarge the can of worms.

        Probably, as with Rule 56, violations by patent attorneys, at least, will be rare especially if they realize, as they should, that the statute of limitations for an investigation by the Office of Enrollment and Discipline has recently been expanded to ten years.

        Anon, did I get your drift?

        1. 1.1.2.1

          Yes – thanks Troubled – I was very much aiming at the symmetry aspect – for the non-patent holder side.

          1. 1.1.2.1.1

            The asymmetry is with respect to the attempt to introduce new or amended claims in an IPR, because they were never examined before. The petitioner could be punished for falsely representing the true effective date of prior art patents or publications or falsely characterizing their teaching to a POSITA. Both parties could be sanctioned or otherwise punished for filing false or missleading declarations. They could have been before now anyway but this Rule makes it clearer.

            1. 1.1.2.1.1.1

              No Paul, that is NOT the aim of my question.

              But thanks – see the rest of the comments.

      3. 1.1.3

        The only sense I can make of it is that anon is imagining a petitioner for revocation who knows of a fact that might conceivably support the patentee’s position more than his own, but refrains from showing it to the PTO. What is to be done about that?

        1. 1.1.3.1

          Apply the FULL scope of responsibility to BOTH sides, MaxDrei.

          I “get” that the main point of Prof. Hricik’s comments have been on the patent holder’s side, in that that side has been expanded. Unlike John at post 2. I do believe that an expansion has taken place. But the expansion is just not only constrained to the patent holder side of the struggle here, and I am wondering what this all means for the other side (and not just about an inconvenient fact, although certainly that is a good example). What exactly does the symmetrical rule mean for the side that wishes to challenge a patent?

          One example for discussion: Fold into this the ongoing debate about “or otherwise could have brought” versus “what the Office actually proceeded with” and switch to the idea of an attacker of a patent NOT bringing everything to bear with the first attack. Regardless of what the Office does, and which items the Office decides to move forward with, since the requirement prior to the Office making its Initiation Decision states plainly that ALL known reasons are to be brought forward, what “penalty” (if any) is incurred for those who engage in serial attacks (wherein it is plainly evident that NOT all attacks were presented in a first attack)? What is the level of diligence required of counsel to make sure that ALL attacks have been vetted before a first attack is made?

          As is often the case, the rule of untended consequences can be harsh, and while the law was written (no doubt in my mind) as an attempt to make attacks on the patent holder easier, the law as written applies to BOTH sides (all parties).

          1. 1.1.3.1.1

            I would further venture to postulate that since the post grant review process was intended by Congress to be an alternative to litigation (and not something to be ployed in addition to litigation, that those who choose the path of post grant review SHOULD suffer some form of issue estoppel and may be barred equitably from engaging in ANY future “foreseeable” court action against the patent holder.

            If this is not a take away, then the very purpose of the Act of Congress is frustrated, since litigation will not have been avoided with the use of the post grant review process (to the “detriment” of ALL parties in the sense of clarity and finality).

            I would then posit that the SCOPE here that applies to ALL parties include this notion of “there is NO ‘keeping your powder dry’ and holding back.”

            Think of an analogy of a wading pool versus an “all deep end” watering hole. Some want to be able to “tip toe” in to a shallow end of the waters, trying out an attack here, or an attack there. The ‘old-fashion ed’ way of learning to swim was the opposite: jump into the deep end and deal with it.

            Does this rule – attaching as it does to BOTH parties – speak then to a requirement to fully vet the “attack” at the onset because the attacker has NO second chance? Remember, the law as written still has the “or otherwise could have brought” language – quite apart from ANYTHING the Office itself decides to move forward with.

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