Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 28561-28566 [2015-12117]

Agencies

• DEPARTMENT OF COMMERCE

[Federal Register Volume 80, Number 96 (Tuesday, May 19, 2015)]
[Rules and Regulations]
[Pages 28561-28566]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-12117]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Part 42

[Docket No. PTO-P-2015-0032]
RIN 0651-AD00


Amendments to the Rules of Practice for Trials Before the Patent 
Trial and Appeal Board

AGENCY: Patent Trial and Appeal Board, United States Patent and 
Trademark Office, U.S. Department of Commerce.

ACTION: Final rule.

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SUMMARY: This final rule amends the existing consolidated set of rules 
relating to the United States Patent and Trademark Office (Office or 
USPTO) trial practice for inter partes review, post-grant review, the 
transitional program for covered business method patents, and 
derivation proceedings that implemented provisions of the Leahy-Smith 
America Invents Act (``AIA'') providing for trials before the Office.

DATES: Effective Date: This rule is effective May 19, 2015.

FOR FURTHER INFORMATION CONTACT: Susan L. C. Mitchell, Lead 
Administrative Patent Judge by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: This final rule 
increases the page limitations for briefing for Patent Owner's motion 
to amend and for Petitioner's reply brief in response to comments from 
the public. This final rule also addresses clarifying changes to the 
rules so that they conform to Office practice in conducting AIA 
proceedings.
    Summary of Major Provisions: In an effort to gauge the 
effectiveness of the rules governing AIA trials, the Office conducted a 
nationwide listening tour in April and May of 2014, and in June 2014, 
published a Federal Register Notice asking for public feedback about 
the AIA trial proceedings. The Office has carefully reviewed the 
comments and, in response to public input, will issue two rules 
packages; a first, final rule package with more ministerial changes to 
the rules, and a second, proposed rule package that will issue later to 
address more involved changes to the rules and the Office Patent Trial 
Practice Guide. The Office presents the following final rules to 
address issues concerning Patent Owner's motion to amend and 
Petitioner's reply brief that involve ministerial changes, and will 
address public comments relating to those specific issues only, in this 
first, final rule package. For instance, the following final rules 
provide ten additional pages for a Patent Owner motion to amend, allow 
a claims appendix for a motion to amend, and provide ten additional 
pages for Petitioner's reply brief.
    These final rules also provide changes to conform the rules to the 
Office's established practices in handling AIA proceedings. For 
instance, the final rules require a specific font to ensure readability 
of briefs, clarify that more than one back-up counsel can be named, and 
clarify how to count challenged claims to calculate fees. The final 
rules also clarify that providing a statement of material fact by a 
party is optional and that routine discovery contemplates only cross-
examination of affidavit testimony prepared for the proceeding. The 
final rules further provide that uncompelled direct testimony must be 
in the form of an affidavit, not a deposition; that motions in limine 
are not used in AIA practice; that objections to evidence should be 
made part of the record by filing them; and that only a single request 
for rehearing may be filed as of right. Finally, with regard to covered 
business method patent reviews, the final rules clarify, consistent 
with the AIA, that such reviews may be extended in the case of joinder 
and that no petition for a covered business method patent review may be 
filed if the petitioner or real party-in-interest filed a civil action 
challenging the validity of a claim of the covered business method 
patent.
    Costs and Benefits: This rulemaking is not economically 
significant, and is not significant, under Executive Order 12866 (Sept. 
30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and 
Executive Order 13422 (Jan. 18, 2007).

Background

Development of the Final Rule

    On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)), and shortly thereafter in 2012, the Office 
implemented rules to govern Office trial practice for AIA proceedings, 
including inter partes review, post-grant review, the transitional 
program for covered business method patents, and derivation proceedings 
pursuant to 35 U.S.C. 135, 316 and 326 and AIA 18(d)(2). See Rules of 
Practice for Trials Before the Patent Trial and Appeal Board and 
Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 
48,612 (Aug. 14, 2012); Changes to Implement Inter Partes Review 
Proceedings, Post-Grant Review Proceedings, and Transitional Program 
for Covered Business Method Patents, 77 FR 48,680 (Aug. 14, 2012); 
Transitional Program for Covered Business Method Patents--Definitions 
of Covered Business Method Patent and Technological Invention, 77 FR 
48,734 (Aug. 14, 2014). Additionally, the Office published a Patent 
Trial Practice Guide for the rules to advise the public on the general 
framework of the regulations, including the structure and times for 
taking action in each of the new proceedings. See Office Patent Trial 
Practice Guide, 77 FR 48,756 (Aug. 14, 2012).
    In an effort to gauge the effectiveness of the rules governing AIA 
trials, the Office conducted a nationwide listening tour in April and 
May of 2014. During the listening tour, the Office focused particularly 
on transparency and public involvement in making trial proceedings more 
effective going forward by adjusting the rules and guidance where 
necessary. As a result, in June of 2014, the Office published a Request 
for Comments in the Federal Register and, at stakeholder request, 
extended the period for receiving comments to October 16, 2014. See 
Request for Comments on Trial Proceedings Under

[[Page 28562]]

the America Invents Act Before the Patent Trial and Appeal Board, 79 FR 
36,474 (June 27, 2014).
    The Request for Comments asked seventeen questions on ten broad 
topics, including a general catchall question, to elicit any proposed 
changes to the AIA post-grant program that stakeholders suggest would 
be beneficial. See Request for Comments, 79 FR at 36,476-77. The Office 
received thirty-seven comments from bar associations, corporations, law 
firms, and individuals, encompassing a wide range of issues. The Office 
expresses its gratitude for the thoughtful and comprehensive comments 
provided by the public, which are available on the USPTO Web site: 
https://www.uspto.gov/page/comments-trial-proceedings-under-america-invents-act-patent-trial-and-appeal-board.
    Several commenters expressed satisfaction with the current AIA 
post-grant programs, and several commenters offered suggestions on how 
to strengthen the AIA post-grant programs. For example, some 
suggestions concerned the claim construction standard used by the PTAB, 
motions to amend, discovery procedures, and handling of multiple 
proceedings. The Office will address all public comments that do not 
involve changes to the page limitations for Patent Owner's motion to 
amend or Petitioner's reply brief in the second, proposed rule package.

Discussion of Specific Final Rules

Subpart A--Trial Practice and Procedure

Patent Owner's Motion To Amend
a. Amendments to the Rules
    In response to comments received from the public concerning 
amendment practice in AIA proceedings, the Office is increasing the 
page limitation for Patent Owner's motion to amend by ten pages and 
allowing a claims appendix that is not included in the page limitation. 
To implement this increase in the page limitation for a motion to amend 
from fifteen to twenty-five pages, exclusive of any claims appendix, 
with a commensurate increase in the number of pages for an opposition 
to a motion to amend, the Office amends 37 CFR 42.24(a) and (c), 
42.121(b), and 42.221(b) as follows:
     Amend 37 CFR 42.24(a)(1) to add the phrase ``or claim 
listing'' after ``or appendix of exhibits.''
     Amend 37 CFR 42.24(a)(1)(v) to read ``Motions (excluding 
Motions to Amend): 15 pages''; and add (vi) to read ``Motions to Amend: 
25 pages.''
     Amend 37 CFR 42.24(c)(2) to read ``Replies to oppositions 
(excluding replies to oppositions to Motions to Amend): 5 pages''; and 
add (3) to read ``Replies to oppositions to Motions to Amend: 12 
pages.''
     Amend 37 CFR 42.121(b) to read ``Content. A motion to 
amend claims must include a claim listing, which claim listing may be 
contained in an appendix to the motion, show the changes clearly, and 
set forth . . . .''
     Amend 37 CFR 42.221(b) to read ``Content. A motion to 
amend claims must include a claim listing, which claim listing may be 
contained in an appendix to the motion, show the changes clearly, and 
set forth . . . .''
b. Response to Comments
    Comments: Although some comments advocated no change to the 
Office's motion to amend practice in AIA proceedings, numerous comments 
suggested relaxing the page limitation on Patent Owner's motion to 
amend. Several comments proposed a specific number of additional pages, 
and/or permitting the listing of claims in an appendix not counted 
toward the page limit. One comment suggested a flexible page limit 
based on the number of substitute claims proposed, and one comment 
suggested that the Board more freely grant requests for additional 
pages. Another comment suggested permitting the patent owner to 
allocate unutilized pages from the patent owner's response to the 
motion to amend.
    Response: The overall request to relax the page limitation on 
Patent Owner's motion to amend is adopted. As set forth above, the 
Office amends 37 CFR 42.24(a) to increase the page limit for motions to 
amend from 15 pages to 25 pages. Applying the provision of 37 CFR 
42.24(b)(3) mandating an equal page limitation for oppositions, the 
page limit for oppositions to motions to amend also increases from 15 
pages to 25 pages. The Office also amends 37 CFR 42.24(c) to increase 
the page limit for replies to oppositions to motions to amend from 5 
pages to 12 pages. Also, the Office amends 37 CFR 42.121(b) and 37 CFR 
42.221(b) to permit an appendix for the claim listing accompanying a 
motion to amend that is not counted toward the 25-page limitation.
    The specific request for a flexible page limit based on the number 
of substitute claims is not adopted. This procedure is not warranted in 
light of the above amendments relaxing the page limitation on Patent 
Owner's motion to amend. In addition, this approach may encourage 
parties to increase unnecessarily the number of substitute claims 
presented solely to procure additional pages for the motion. In accord 
with the specific request that the Board more freely grant requests for 
additional pages, however, the Board will continue to consider requests 
for additional pages on a case-by-case basis.
    The specific request that a patent owner be able to allocate pages 
from the patent owner's response to a motion to amend is not adopted. 
This procedure is not warranted in light of the above amendments 
relaxing the page limitation on Patent Owner's motion to amend. In 
addition, this procedure would be difficult to administer in light of 
the above amendments, placing an undue administrative burden on the 
Office to determine and monitor the total number of pages allocated to 
the patent owner, to the petitioner's opposition to the motion to 
amend, and to any reply.
Petitioner's Reply
a. Amendments to the Rules
    In response to comments received from the public, the Office is 
increasing the page limitation for Petitioner's reply brief to Patent 
Owner's response to petition by 10 pages. To implement this increase in 
the page limitation for Petitioner's reply brief from fifteen to 
twenty-five pages, the Office amends 37 CFR 42.24(c)(1) to read: 
``Replies to patent owner responses to petitions: 25 pages.''
b. Response to Comments
    Comments: Although at least one commenter wanted no change, several 
commenters suggested that the fifteen pages afforded for a Petitioner's 
reply brief is not commensurate with the number of pages afforded to 
Patent Owner, especially if Patent Owner raises new issues. Commenters 
suggested that increasing the page limitation for Petitioner's reply 
brief would allow a more complete record before the Office. One comment 
suggested that to provide Petitioner with a fair opportunity to 
respond, the number of pages afforded for Petitioner's reply brief may 
correspond to the number of pages in Patent Owner's post-institution 
response that is devoted to new issues.
    Response: The overall request to relax page limitations on 
Petitioner's reply brief to Patent Owner's response is adopted. As set 
forth above, the Office amends 37 CFR 42.24(c)(1) to increase the page 
limit for Petitioner's reply brief from 15 to 25 pages.
    The specific request for a flexible page limit based on new issues 
raised in Patent Owner's response is not adopted. This procedure is not 
warranted in light of the above amendment relaxing the page limitation 
on Petitioner's reply

[[Page 28563]]

brief. In addition, this procedure would be difficult to administer, 
placing an undue administrative burden on the Office to determine the 
total number of pages allocated by Patent Owner to new issues.
Required Font
    In AIA post-grant proceeding filings, the Office has required 
either a proportional or monospaced font that is 14-point or larger, 
with an additional requirement that any monospaced font must not 
contain more than four characters per centimeter or ten characters per 
inch. See 37 CFR 42.6(a)(2)(ii). The Office has received briefs from 
parties that utilize narrow fonts that may be compliant with these 
requirements, but nevertheless, have proved difficult to read. To 
address this concern, the Office is amending 37 CFR 42.6(a)(2) to 
require 14-point, Times New Roman proportional font, with normal 
spacing, to ensure readability of all briefs.
Counsel
    To clarify the rule regarding designation of counsel for an AIA 
proceeding that more than one back-up counsel may be designated, the 
Office amends 37 CFR 42.10 as follows:
     Replace the article ``a'' before ``back-up counsel'' with 
``at least one'' in 37 CFR 42.10(a).
Fees
    The Office has explained in the Office Patent Trial Practice Guide 
that to understand the scope of a dependent claim, the claim(s) from 
which the dependent claim depends must be construed along with the 
dependent claim. Therefore, to calculate any fee due under 37 CFR 42.15 
that is based on the number of claims, 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. See Rules of 
Practice for Trials Before the Patent Trial and Appeal Board and 
Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 
77 FR 48,612, 48,619 (Aug. 14, 2012).
    To clarify the fees rule to reflect explicitly this requirement to 
include unchallenged claims from which a challenged claim depends in 
the claim count for fee calculating purposes, the Office is amending 37 
CFR 42.15 as follows:
     Add the content ``, including unchallenged claims from 
which a challenged claim depends'' after the text ``each claim in 
excess of 20'' in 37 CFR 42.15(a)(3) and 42.15(b)(3).
     Delete the first instance of the phrase ``request fee'' in 
the following phrase ``Post-Grant or Covered Business Method Patent 
Review request fee Post-Institution request fee'' in 42.15(b)(4).
     Add the content ``, including unchallenged claims from 
which a challenged claim depends'' after the text ``each claim in 
excess of 15'' in 37 CFR 42.15(a)(4) and 42.15(b)(4).
Oppositions and Replies and Page Limits for Petitions, Motions, 
Oppositions, and Replies
    To clarify that supplying a statement of material fact by a party 
is optional, the Office amends 37 CFR 42.23 and 42.24 as follows:
     Replace the phrase ``and must include a statement 
identifying material facts in dispute'' from the first sentence of 37 
CFR 42.23(a) with ``and, if the paper to which the opposition or reply 
is responding contains a statement of material fact, must include a 
listing of facts that are admitted, denied, or cannot be admitted or 
denied.''
     Replace the phrase ``the required'' with ``any'' in the 
first sentence of 37 CFR 42.24(c).
Discovery
    To clarify that routine discovery includes only the cross-
examination of affidavit testimony prepared for the proceeding, the 
Office amends 37 CFR 42.51(b)(1)(ii) to add the phrase ``prepared for 
the proceeding'' after ``affidavit testimony.''
Taking Testimony
    Because uncompelled direct testimony must be submitted in the form 
of an affidavit, the Office is amending 37 CFR 42.53(c)(2) as follows:
     Delete the word ``deposition'' from the phrase 
``uncompelled direct deposition testimony.''
    To clarify that either party is permitted to file testimony as an 
exhibit, the Office amends 37 CFR 42.53(f)(7) to delete the phrase ``by 
proponent'' in the second sentence.
Motion in Limine
    The term motion in limine is included in the title for 37 CFR 
42.64, but the rule does not provide for a motion in limine. To clarify 
the rule, the Office amends 37 CFR 42.64 to delete ``motion in limine'' 
from the title of the rule.
Objection
    The Office amends 37 CFR 42.64(b)(1) for consistency with the 
Office Patent Trial Practice Guide. The Office Patent Trial Practice 
Guide requires that a party wishing to challenge admissibility of 
evidence must object timely to the evidence. Therefore, the Office 
Patent Trial Practice Guide states that a motion to exclude evidence 
requires a party to identify where in the record the objection 
originally was made, but 37 CFR 42.64(b)(1) merely requires service of 
objections to evidence, which does not make such objections part of the 
record. Therefore, the Office amends the first and second sentences of 
37 CFR 42.64(b)(1) to replace ``served'' with ``filed'' so as to 
require filing of objections, which also requires service under 37 CFR 
42.6(e)(2).
Decision on Petition or Motions
    To clarify that a party may file only a single request for 
rehearing as of right, the Office amends 37 CFR 42.71(d) to add 
``single'' before ``request for rehearing'' in the first sentence.

Subpart D--Transitional Program for Covered Business Method Patents

Procedure and Pendency
    To clarify that the pendency of a covered business method patent 
review proceeding can be extended in the case of joinder and to 
harmonize the rule with similar rules in other post grant proceedings, 
the Office amends 37 CFR 42.300(c) to add ``, or adjusted by the Board 
in the case of joinder'' at the end of the second sentence after 
``Chief Administrative Patent Judge.''
Who May Petition for a Covered Business Method Patent Review
    The Office may not institute a covered business method patent 
review of a challenged patent when the petitioner filed a civil action 
challenging the validity of a claim of the patent before filing the 
petition. See AIA section 18(a)(1); 35 U.S.C. 325(a)(1); SecureBuy, LLC 
v. CardinalCommerce Corp., Case CBM2014-00035 (PTAB Apr. 25, 2014) 
(Paper 12) (precedential). To state this prohibition explicitly, the 
Office amends 37 CFR 42.302 to add a section (c) as set forth in the 
regulatory text of this rule.

Rulemaking Considerations

    A. Administrative Procedure Act (APA): This final rule revises the 
consolidated set of rules relating to Office trial practice for inter 
partes review, post-grant review, the transitional program for covered 
business method patents, and derivation proceedings. The changes being 
adopted in this rule do not change the substantive criteria of 
patentability. These changes involve rules of agency practice. See, 
e.g., 35 U.S.C. 316(a)(5), as amended. https://www.cruiseamerica.com/rent/our_vehicles/ These rules are procedural

[[Page 28564]]

and/or interpretive rules. See Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 
683, 690 (D.C. Cir. 2001) (rules governing an application process are 
procedural under the Administrative Procedure Act); Inova Alexandria 
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling 
appeals were procedural where they did not change the substantive 
requirements for reviewing claims); Nat'l Org. of Veterans' Advocates 
v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) 
(rule that clarifies interpretation of a statute is interpretive); JEM 
Broad. Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (rules are not 
legislative because they do not ``foreclose effective opportunity to 
make one's case on the merits'').
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and 
thirty-day advance publication is not required pursuant to 5 U.S.C. 
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 
U.S.C. 2(b)(2)(B), do not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'') (quoting 5 U.S.C. 
553(b)(A)); U.S. v. Gould, 568 F.3d 459, 476 (4th Cir. 2009) (``The APA 
also requires publication of any substantive rule at least 30 days 
before its effective date, 5 U.S.C. 553(d), except where the rule is 
interpretive . . . .'').
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601-612) 
is required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the rule and other required information to the United States 
Senate, the United States House of Representatives, and the Comptroller 
General of the Government Accountability Office. The changes in this 
final rule are not expected to result in an annual effect on the 
economy of 100 million dollars or more, a major increase in costs or 
prices, or significant adverse effects on competition, employment, 
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic 
and export markets. Therefore, this final rule is not a ``major rule'' 
as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501-3549) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This final rule involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
This rulemaking does not add any additional information requirements or 
fees for parties before the Board. Therefore, the Office is not 
resubmitting information collection packages to OMB for its review and 
approval because the revisions in this rulemaking do not materially 
change the

[[Page 28565]]

information collections approved under OMB control number 0651-0069.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 42

    Administrative practice and procedure, inventions and patents.

    For the reasons set forth in the preamble, 37 CFR part 42 is 
amended as follows.

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
1. The authority citation for 37 CFR part 42 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 
321-326 and Public Law 112-29.

Subpart A--Trial Practice and Procedure

0
2. Section 42.6 is amended by revising paragraph (a)(2)(ii) to read as 
follows:


Sec.  42.6  Filing of documents, including exhibits; service.

    (a) * * *
    (2) * * *
    (ii) 14-point, Times New Roman proportional font, with normal 
spacing, must be used;
* * * * *

0
3. Section 42.10 is amended by revising paragraph (a) to read as 
follows:


Sec.  42.10  Counsel.

    (a) If a party is represented by counsel, the party must designate 
a lead counsel and at least one back-up counsel who can conduct 
business on behalf of the lead counsel.
* * * * *

0
4. Section 42.15 is amended by revising paragraphs (a)(3), (a)(4), 
(b)(3), and (b)(4) to read as follows:


Sec.  42.15  Fees.

    (a) * * *
    (3) In addition to the Inter Partes Review request fee, for 
requesting review of each claim in excess of 20, including unchallenged 
claims from which a challenged claim depends: $200.00.
    (4) In addition to the Inter Partes Post-Institution request fee, 
for requesting review of each claim in excess of 15, including 
unchallenged claims from which a challenged claim depends: $400.00.
    (b) * * *
    (3) In addition to the Post-Grant or Covered Business Method Patent 
Review request fee, for requesting review of each claim in excess of 
20, including unchallenged claims from which a challenged claim 
depends: $250.00.
    (4) In addition to the Post-Grant or Covered Business Method Patent 
Review Post-Institution request fee, for requesting review of each 
claim in excess of 15, including unchallenged claims from which a 
challenged claim depends: $550.00.
* * * * *

0
5. Section 42.23 is amended by revising the first sentence of paragraph 
(a) to read as follows:


Sec.  42.23  Oppositions and replies.

    (a) Oppositions and replies must comply with the content 
requirements for motions and, if the paper to which the opposition or 
reply is responding contains a statement of material fact, must include 
a listing of facts that are admitted, denied, or cannot be admitted or 
denied. * * *
* * * * *

0
6. Section 42.24 is amended by revising paragraphs (a)(1) introductory 
text and (a)(1)(v), the first sentence of paragraph (c) introductory 
text, and paragraphs (c)(1) and (c)(2), and adding paragraphs 
(a)(1)(vi) and (c)(3) to read as follows:


Sec.  42.24  Page limits for petitions, motions, oppositions, and 
replies.

    (a) Petitions and motions.
    (1) The following page limits for petitions and motions apply and 
include any statement of material facts to be admitted or denied in 
support of the petition or motion. The page limit does not include a 
table of contents, a table of authorities, a certificate of service, or 
appendix of exhibits or claim listing.
* * * * *
    (v) Motions (excluding Motions to Amend): 15 pages.
    (vi) Motions to Amend: 25 pages.
* * * * *
    (c) Replies. The following page limits for replies apply and 
include any statement of facts in support of the reply. * * *
    (1) Replies to patent owner responses to petitions: 25 pages.
    (2) Replies to oppositions (excluding replies to oppositions to 
Motions to Amend): 5 pages.
    (3) Replies to oppositions to Motions to Amend: 12 pages.

0
7. Section 42.51 is amended by revising paragraph (b)(1)(ii) to read as 
follows.


Sec.  42.51  Discovery.

* * * * *
    (b) * * *
    (1) * * *
    (ii) Cross examination of affidavit testimony prepared for the 
proceeding is authorized within such time period as the Board may set.
* * * * *

0
8. Section 42.53 is amended by revising paragraphs (c)(2) and (f)(7) to 
read as follows:


Sec.  42.53  Taking testimony.

* * * * *
    (c) * * *
    (2) Unless stipulated by the parties or ordered by the Board, 
cross-examination, redirect examination, and re-cross examination for 
uncompelled direct testimony shall be subject to the follow time 
limits: Seven hours for cross-examination, four hours for redirect 
examination, and two hours for re-cross examination.
* * * * *
    (f) * * *
    (7) Except where the parties agree otherwise, the proponent of the 
testimony must arrange for providing a copy of the transcript to all 
other parties. The testimony must be filed as an exhibit.
* * * * *

0
9. Section 42.64 is amended by revising the section heading and the 
first two sentences of paragraph (b)(1) to read as follows.


Sec.  42.64  Objection; motion to exclude.

* * * * *
    (b) * * *
    (1) Objection. Any objection to evidence submitted during a 
preliminary proceeding must be filed within ten business days of the 
institution of the trial. Once a trial has been instituted, any 
objection must be filed within five business days of service of 
evidence to which the objection is directed. * * *
* * * * *

0
10. Section 42.71 is amended by revising the first sentence of 
paragraph (d) to read as follows:


Sec.  42.71  Decisions on petitions or motions.

* * * * *
    (d) Rehearing. A party dissatisfied with a decision may file a 
single request for rehearing without prior authorization from the 
Board. * * *
* * * * *

[[Page 28566]]

Subpart B--Inter Partes Review

0
11. Section 42.121 is amended by revising paragraph (b) introductory 
text to read as follows:


Sec.  42.121  Amendment of the patent.

* * * * *
    (b) Content. A motion to amend claims must include a claim listing, 
which claim listing may be contained in an appendix to the motion, show 
the changes clearly, and set forth:
* * * * *

Subpart C--Post-Grant Review

0
12. Section 42.221 is amended by revising paragraph (b) introductory 
text to read as follows:


Sec.  42.221  Amendment of the patent.

* * * * *
    (b) Content. A motion to amend claims must include a claim listing, 
which claim listing may be contained in an appendix to the motion, show 
the changes clearly, and set forth:
* * * * *

Subpart D--Transitional Program for Covered Business Method Patents

0
13. Section 42.300 is amended by revising paragraph (c) to read as 
follows:


Sec.  42.300  Procedure; pendency.

* * * * *
    (c) A covered business method patent review proceeding shall be 
administered such that pendency before the Board after institution is 
normally no more than one year. The time can be extended by up to six 
months for good cause by the Chief Administrative Patent Judge, or 
adjusted by the Board in the case of joinder.
* * * * *

0
14. Section 42.302 is amended by adding paragraph (c) to read as 
follows:


Sec.  42.302  Who may petition for a covered business method patent 
review.

* * * * *
    (c) A petitioner may not file a petition to institute a covered 
business method patent review of the patent where, before the date on 
which the petition is filed, the petitioner or real party-in-interest 
filed a civil action challenging the validity of a claim of the patent.

    Dated: May 14, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-12117 Filed 5-18-15; 8:45 am]
 BILLING CODE 3510-16-P