Practical Tools

• Author: Erika Harmon Arner - Kathleen A. Daley - Michael J. Flibbert
• Pages: 109-236

One of the most daunting tasks for practitioners before the Board is synthe-

sizing the many different rules that apply to each proceeding. In addition

to the statutes, there are “umbrella” rules that apply to all Board trials;

rules that apply only to IPR, PGR, or CBM-PGR proceedings; and a Patent

Trial Practice Guide that explains and interprets the rules. The Ofce also

provides a wealth of commentary in the rule-making process and informal

guidance in the form of presentations and training materials published

on the Ofce’s website. And, of course, much can be learned from Board

orders and decisions.

This chapter provides a comprehensive collection of all signicant Ofce

guidance for Board practice, organized by topic. Each topic is organized

according to the following framework:1

• Recitation of a rule

• Published responses to comments pertaining to the rule2

1. IPR-specic rules often mirror PGR-specic rules, and vice versa. Accordingly, commen-

tary, orders, and decisions addressing IPR-specic rules may be relevant to PGR-specic rules.

Similarly, commentary, orders, and decisions addressing PGR-specic rules may be relevant to

IPR-specic rules. Thus, IPR-specic sections of this chapter sometimes refer to PGR-specic

commentary, decisions, and orders. Likewise, PGR-specic sections of this chapter sometimes

refer to IPR-specic commentary, decisions, and orders.

2. For convenience and readability, individual citations to each of the listed responses to

comments are not provided in the text.

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Chapter 5

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❏

Designates responses to comments provided in the Rules of Prac-

tice for Trials Before the Patent Trial and Appeal Board and Judicial

Review of Patent Trial and Appeal Board Decisions, 77 Federal Reg

-

ister 157, 48612 (Aug. 14, 2012)

✰

Designates responses to comments provided in the Changes to

Implement Inter Partes Review Proceedings, Post-Grant Review Pro-

ceedings, and Transitional Program for Covered Business Method

Patents, 77 Federal Register 157, 48680 (Aug. 14, 2012)



Designates responses to comments provided in the Transitional Pro-

gram for Covered Business Method Patents—Denitions of Covered

Business Method Patent and Technological Invention, 77 Federal

Register 157, 48734 (Aug. 14, 2012)

❖Designates responses to comments provided in the Amendments to

the Rules of Practice for Trials Before the Patent Trial and Appeal

Board; Proposed Rules, 80 Federal Register 161, 50720 (Aug. 20,

2015)

❍Designates responses to comments provided in the Amendments to

the Rules of Practice for Trials Before the Patent Trial and Appeal

Board, 81 Federal Register 63, 18750 (Apr. 1, 2016)

•

Precedential, informative, or representative decisions/orders pertain-

ing to the rule

•

Portions of the Ofce Patent Trial Practice Guide pertaining to the rule

3

• Informal Guidance pertaining to the rule

At the end of the chapter, following the comprehensive collection of

Ofce guidance, are several practice tools, including handy checklists of

must-have items for each stage of a Board trial, Board time lines, and Board

contact information.

3. For convenience and readability, individual citations to the Ofce Patent Trial Practice

Guide pinpoint pages from 77 Federal Register 157, 48756 (Aug. 14, 2012).

CHAPTER 5

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A. Ofce Guidance on Patent Trials

Referred to by the Ofce as “umbrella” rules, the rules and guidance in

this section apply to all Board trials, including IPR, PGR, and CBM-PGR.

1. Trial Rules

a. Rules of Construction; Burden of Proof

Rule: § 42.1 Policy.4

(a) Scope. Part 42 governs proceedings before the Patent Trial and

Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26,

1.32, 1.34, and 1.36 of this chapter also apply to proceedings before

the Board, as do other sections of part 1 of this chapter that are incor-

porated by reference into this part.

(b) Construction. This part shall be construed to secure the just, speedy,

and inexpensive resolution of every proceeding.

(c) Decorum. Every party must act with courtesy and decorum in all

proceedings before the Board, including in interactions with other

parties.

(d) Evidentiary standard. The default evidentiary standard is a pre-

ponderance of the evidence.

Comments

❏

1—Burden of persuasion does not shift to the patentee upon ling

amended claims. Instead, the patentee must include a statement of

the precise relief requested and a full statement of the reasons for the

relief requested.

❏

2—The Board will construe the rules to secure the just, speedy, and

inexpensive resolution of every proceeding.

b. Denitions

Rule: § 42.2 Denitions.5

4. According to the Ofce, this rule is consistent with 35 U.S.C. §§ 135, 316, 326.

5. According to the Ofce, this rule is consistent with 35 U.S.C. §§ 6, 135, 311, 318,

321, 328.

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