President Trump’s administrative agencies are working hard to lock-in policy changes before the major shift expected in January. The Patent Office is no different. The changes here (except those implementing court precedent) are ones that the next administration could change, but the implementation Final Rules and Precedential Decision create administrative hurdles.
Final Rules on PTAB Practice: A new set of final rules has now been published and will become effective on January 8, 2021. [Rules].
- Eliminating Presumption in Favor of Petitioner’s Evidence: During the institution stage, there is currently a presumption in favor of the petitioner involving testimonial evidence. 37 C.F.R. § 42.108(c) states that “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.’’ The change eliminates that presumption and going forward the Board will simply consider and weigh all presented evidence according to the institution standard.
- Right to a sur-reply: this rule provides the patentee with the right to get-in the last word in the institution-stage briefing. The new rules also allows the patent owner to respond to a decision to institute. These changes have already been adopted by the Board, but are now codified within the Rules.
- SAS: The new rules also implement the requirements of SAS barring partial institution (either all challenged claims are reviewed, or no claims are reviewed).
New Precedential Decisions: The PTAB (operating under the guidance of Dir. Iancu) has designated three recent institution related decisions as Precedential. These decisions are important for locking-in the Board’s approach because the Federal Circuit no longer has authority (Thryv) to guide the scope and procedure of IPR institutions.
- RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) (Finding that Salesforce is a real-party-in-interest of RPX, and thus that RPX is time-barred from petitioning for IPR).
- SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential) (Board only needs to resolve real-party-in-interest disputes that would impact the time-bar).
- Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential) (Denying institution/joinder of Apple’s copycat petition as a serial challenge; applying the General Plastics model.)
[PTO Description and Links to Cases]. It is easier for the next admin to make changes to these precedential decisions than it is to change rulemaking, but would at least be done in a public manner.