PTAB Issues 'Quick Fix' Rule Package, Effective Immediately

On March 31 we posted (here) about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring. This past Tuesday, May 19, 2015, the PTAB announced that the “quick fix” rules have now been published in the Federal Register and are effective immediately. The rules codify, among other things, changes that the PTAB has implemented recently in Scheduling Orders to increase the page limitations for Petitioner’s reply brief and for briefing for Patent Owner’s motion to amend (also allowing a claims appendix). The rules package also conforms several sections of 37 C.F.R. § 42 to certain Office practices in conducting AIA proceedings.

At a high-level, the rules are as follows:

1. Patent Owner’s Motion to Amend
   The page limitation for Patent Owner’s motion to amend increases from 15 to 25 pages, and allowing a claims appendix that is not included in the page limitation. 37 C.F.R. §§ 42.24(a), 42.24(c), 42.121(b), and 42.221(b).
2. Petitioner’s Reply
   The page limitation for Petitioner’s reply brief to Patent Owner’s response to petition increases from 15 to 25 pages. 37 C.F.R. § 42.24(c)(1).
3. Required Font
   14-point, Times New Roman proportional font, with normal spacing, to ensure readability of all briefs. 37 C.F.R. § 42.6(a)(2).
4. Counsel
   More than one back-up counsel may be designated for an AIA proceeding. 37 C.F.R. § 42.10.
5. Fees
   Each claim challenged will be counted, as well as any claim from which a challenged claim depends, unless the parent claim is also separately challenged. 37 C.F.R. § 42.15.
6. Opposition and Replies and Page Limits for Petitions, Motions, Oppositions, and Replies
   Supplying a statement of material fact by a party is optional. 37 C.F.R. §§ 42.23 and 42.24.
7. Discovery
   Routine discovery includes only the cross-examination of affidavit testimony prepared for the proceeding. 37 C.F.R. § 42.51(b)(1)(ii).
8. Motion in Limine
   While the term “motion in limine” is included in the title of 37 C.F.R. § 42.64, the rule does not actually provide for a motion in limine. Accordingly, “motion in limine” has been deleted from the title. 37 C.F.R. § 42.64.
9. Objection
   A party wishing to challenge admissibility of evidence must object timely to the evidence. 37 C.F.R. § 42.64(b)(1).
10. Decision on Petition or Motions
    A party may file only a single request for rehearing as of right. 37 C.F.R. § 42.71(d).
11. Cover Business Method Proceedings (CBMs)—Procedure and Pendency
    Pendency of a covered business method patent review proceeding can be extended in the case of joinder. 37 C.F.R. § 42.300(c).
12. CBMs—Who May Petition
    A covered business method patent review of a challenged patent may not be instituted when the petitioner filed a civil action challenging the validity of a claim of the patent before filing the petition. 37 C.F.R. § 42.302.

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