The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB) in accordance with the 2018 Supreme Court decision in SAS Institute Inc. v. Iancu, IP Update, Vol. 21, No. 5 (SAS). Additionally, the USPTO proposed changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a Patent Owner response and reply may respond to a decision on institution. The USPTO further proposed a change to eliminate the presumption that a genuine issue of material fact created by the Patent Owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

In SAS, the Supreme Court held that a decision to institute an IPR under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in a petition. The Court held that the PTAB only has the discretion to institute on all of the claims challenged in the petition or to deny the petition. Previously, the PTAB exercised discretion to institute an IPR, PGR or CBM on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted in a petition.

In light of SAS, the USPTO now proposes to amend the rules pertaining to instituting any post-grant proceeding (IPR, PGR or CBM) to require institution on all challenged claims (and all of the grounds) presented in a petition or on none. In addition, in all pending proceedings, the PTAB would either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.

The second proposed change would amend the rules pertaining to briefing regarding sur-replies to principal briefs and to provide that a reply may respond to a decision on institution. The amended rules would permit (1) replies and Patent Owner responses to address issues discussed in the institution decision and (2) sur-replies to principal briefs (i.e., to a reply to a Patent Owner response or to a reply to an opposition to a motion to amend). However, the sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. Sur-replies may only respond to arguments made in reply briefs, comment on reply declaration testimony or point to cross-examination testimony. A sur-reply also may address the institution decision if necessary to respond to the petitioner’s reply.

Finally, the USPTO proposes to amend the rules to eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a

Patent Owner’s preliminary response when deciding whether to institute an IPR, PGR or CBM review. As with all other evidentiary questions at the institution phase, the [...]

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