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`(cid:5)(cid:5)(cid:3)(cid:6)(cid:7)(cid:3)(cid:8)(cid:9)(cid:5)(cid:10)(cid:11)(cid:4)(cid:12)(cid:13)
`(cid:7)(cid:14)(cid:15)(cid:16)(cid:17)(cid:3)(cid:18)(cid:19)(cid:20)(cid:3)(cid:7)(cid:16)(cid:21)(cid:14)(cid:15)(cid:22)(cid:23)(cid:24)(cid:25)(cid:26)(cid:17)
`(cid:27)(cid:16)(cid:28)(cid:22)(cid:7)(cid:23)(cid:29)(cid:16)(cid:26)(cid:23)(cid:3)(cid:25)(cid:6)(cid:3)(cid:30)(cid:25)(cid:29)(cid:29)(cid:16)(cid:7)(cid:30)(cid:16)
`(cid:28)(cid:18)(cid:31)(cid:32)(cid:19)(cid:31)(cid:3)(cid:18)(cid:19)(cid:20)(cid:3)(cid:23)(cid:33)(cid:18)(cid:20)(cid:32)(cid:34)(cid:18)(cid:33)(cid:35)(cid:3)(cid:25)(cid:36)(cid:36)(cid:37)(cid:38)(cid:32)
`(cid:39)(cid:5)(cid:3)(cid:30)(cid:6)(cid:7)(cid:3)(cid:28)(cid:18)(cid:33)(cid:31)(cid:3)(cid:8)(cid:40)
`(cid:41)(cid:27)(cid:42)(cid:38)(cid:35)(cid:32)(cid:31)(cid:3)(cid:26)(cid:42)(cid:43)(cid:3)(cid:28)(cid:23)(cid:25)(cid:4)(cid:28)(cid:4)(cid:40)(cid:12)(cid:13)(cid:13)(cid:4)(cid:12)(cid:12)(cid:44)(cid:8)(cid:45)
`
`(cid:25)(cid:36)(cid:36)(cid:37)(cid:38)(cid:32)(cid:3)(cid:28)(cid:18)(cid:31)(cid:32)(cid:19)(cid:31)(cid:3)(cid:23)(cid:33)(cid:37)(cid:18)(cid:46)(cid:3)(cid:28)(cid:33)(cid:18)(cid:38)(cid:31)(cid:37)(cid:38)(cid:32)(cid:3)(cid:21)(cid:47)(cid:37)(cid:20)(cid:32)
`
`(cid:23)(cid:47)(cid:32)(cid:48)(cid:20)(cid:18)(cid:49)(cid:50)(cid:3)(cid:22)(cid:47)(cid:51)(cid:47)(cid:48)(cid:31)(cid:3)(cid:13)(cid:8)(cid:50)(cid:3)(cid:40)(cid:12)(cid:13)(cid:40)
`
`AGENCY: United States Patent and Trademark Office, Commerce.
`
`*48756 ACTION: Notice of practice guide.
`
`SUMMARY: The Leahy-Smith America Invents Act (AIA) establishes several new trial proceedings to be conducted by the
`Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered
`business method patents, and derivation proceedings. In separate rulemakings, the United States Patent and Trademark Office
`(Office or USPTO) is revising the rules of practice to implement these provisions of the AIA that provide for the trial proceedings
`before the Board. The Office publishes in this notice a practice guide for the trial final 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.
`(cid:27)(cid:22)(cid:23)(cid:16)(cid:17)(cid:52)(cid:3)(cid:16)(cid:36)(cid:36)(cid:32)(cid:38)(cid:31)(cid:37)(cid:53)(cid:32)(cid:3)(cid:27)(cid:18)(cid:31)(cid:32)(cid:52)(cid:3)(cid:23)(cid:54)(cid:37)(cid:48)(cid:3)(cid:55)(cid:33)(cid:18)(cid:38)(cid:31)(cid:37)(cid:38)(cid:32)(cid:3)(cid:51)(cid:47)(cid:37)(cid:20)(cid:32)(cid:3)(cid:18)(cid:55)(cid:55)(cid:46)(cid:37)(cid:32)(cid:48)(cid:3)(cid:31)(cid:42)(cid:3)(cid:37)(cid:19)(cid:31)(cid:32)(cid:33)(cid:3)(cid:55)(cid:18)(cid:33)(cid:31)(cid:32)(cid:48)(cid:3)(cid:33)(cid:32)(cid:53)(cid:37)(cid:32)(cid:56)(cid:50)(cid:3)(cid:55)(cid:42)(cid:48)(cid:31)(cid:4)(cid:51)(cid:33)(cid:18)(cid:19)(cid:31)(cid:3)(cid:33)(cid:32)(cid:53)(cid:37)(cid:32)(cid:56)(cid:50)(cid:3)(cid:18)(cid:19)(cid:20)(cid:3)(cid:38)(cid:42)(cid:53)(cid:32)(cid:33)(cid:32)(cid:20)(cid:3)(cid:57)(cid:47)(cid:48)(cid:37)(cid:19)(cid:32)(cid:48)(cid:48)
`(cid:34)(cid:32)(cid:31)(cid:54)(cid:42)(cid:20)(cid:3)(cid:55)(cid:18)(cid:31)(cid:32)(cid:19)(cid:31)(cid:3)(cid:33)(cid:32)(cid:53)(cid:37)(cid:32)(cid:56)(cid:3)(cid:55)(cid:33)(cid:42)(cid:38)(cid:32)(cid:32)(cid:20)(cid:37)(cid:19)(cid:51)(cid:48)(cid:3)(cid:38)(cid:42)(cid:34)(cid:34)(cid:32)(cid:19)(cid:38)(cid:37)(cid:19)(cid:51)(cid:3)(cid:42)(cid:19)(cid:3)(cid:42)(cid:33)(cid:3)(cid:18)(cid:36)(cid:31)(cid:32)(cid:33)(cid:3)(cid:17)(cid:32)(cid:55)(cid:31)(cid:32)(cid:34)(cid:57)(cid:32)(cid:33)(cid:3)(cid:13)(cid:11)(cid:50)(cid:3)(cid:40)(cid:12)(cid:13)(cid:40)(cid:50)(cid:3)(cid:18)(cid:48)(cid:3)(cid:56)(cid:32)(cid:46)(cid:46)(cid:3)(cid:18)(cid:48)(cid:3)(cid:20)(cid:32)(cid:33)(cid:37)(cid:53)(cid:18)(cid:31)(cid:37)(cid:42)(cid:19)(cid:3)(cid:55)(cid:33)(cid:42)(cid:38)(cid:32)(cid:32)(cid:20)(cid:37)(cid:19)(cid:51)(cid:48)
`(cid:38)(cid:42)(cid:34)(cid:34)(cid:32)(cid:19)(cid:38)(cid:37)(cid:19)(cid:51)(cid:3)(cid:42)(cid:19)(cid:3)(cid:42)(cid:33)(cid:3)(cid:18)(cid:36)(cid:31)(cid:32)(cid:33)(cid:3)(cid:29)(cid:18)(cid:33)(cid:38)(cid:54)(cid:3)(cid:13)(cid:11)(cid:50)(cid:3)(cid:40)(cid:12)(cid:13)(cid:39)(cid:43)
`
`FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative Patent Judge, Board of Patent Appeals
`and Interferences (will be renamed as Patent Trial and Appeal Board on September 16, 2012), by telephone at (571) 272-9797.
`
`SUPPLEMENTARY INFORMATION:
`Executive Summary: The patent trial regulations lay out a framework for conducting the proceedings aimed at streamlining and
`converging the issues for decision. In doing so, the Office's goal is to conduct proceedings in a timely, fair, and efficient manner.
`Further, the Office has designed the proceedings to allow each party to determine the preferred manner of putting forward its
`case, subject to the guidance of judges who determine the needs of a particular case through procedural and substantive rulings
`throughout the proceedings.
`
`Background: The Leahy-Smith America Invents Act establishes several new trial proceedings to be conducted by the Board
`including: (1) Inter partes review (IPR); (2) post-grant review (PGR); (3) a transitional program for covered business method
`patents (CBM); and (4) derivation proceedings. The AIA requires the Office to promulgate rules for the proceedings, with the
`PGR, IPR, and CBM rules to be in effect one year after AIA enactment and the derivation rules to be in effect 18 months after
`AIA enactment.
`
`Consistent with the statute, the Office published a number of notices of proposed rulemaking in February of 2012, and requested
`written comments on the Office's proposed implementation of the new trial proceedings of the AIA. The Office also hosted a
`series of public educational roadshows, across the country, regarding the proposed rules.
`
`Additionally, the Office published a practice guide based on the proposed trial rules in the Federal Register to provide the
`public an opportunity to comment. Practice Guide for Proposed Trial Rules, 77 FR 6868 (Feb. 9, 2012) (Request for Comments)
`(hereafter “Practice Guide for Proposed Trial Rules” or “Office Patent Trial Practice Guide”). This Office Patent Trial Practice
`Callidus Ex. 1008
`CBM2013-00053
`1
`(Callidus v. Versata)
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`(cid:40)(cid:91)(cid:17)(cid:3)(cid:20)(cid:19)(cid:19)(cid:27)(cid:3)(cid:19)(cid:20)(cid:18)(cid:22)(cid:23)
` © 2013 Thomson Reuters. No claim to original U.S. Government Works.
`
`
`
`Office Patent Trial Practice Guide, 77 FR 48756-01
`
`Guide is intended to advise the public on the general framework of the rules, including the structure and times for taking action
`in each of the new proceedings.
`
`In response to the notices of proposed rulemaking and the Practice Guide notice, the Office received 251 submissions of written
`comments from intellectual property organizations, businesses, law firms, patent practitioners, and others, including a United
`States senator who was a principal author of section 18 of the AIA. The comments provided support for, opposition to, and
`diverse recommendations on the proposed rules. The Office appreciates the thoughtful comments, and has considered and
`analyzed the comments thoroughly. In light of the comments, the Office has made modifications to the proposed rules to provide
`clarity and to balance the interests of the public, patent owners, patent challengers, and other interested parties, in light of
`the statutory requirements and considerations, such as the effect of the regulations on the economy, the integrity of the patent
`system, the efficient administration of the Office, and the ability of the Office to complete the proceedings timely.
`
`For the implementation of sections 3, 6, 7, and 18 of the AIA that are related to administrative trials and judicial review of Board
`decisions, the Office is publishing the following final rules in separate notices in the Federal Register: (1) Rules of Practice for
`Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (RIN 0651-
`AC70); (2) Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`for Covered Business Method Patents (RIN 0651-AC71); (3) Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological Invention (RIN 0651-AC75); and (4) Changes to Implement
`Derivation Proceedings (RIN 0651-AC74). The Office also provides responses to the public written comments in these final
`rules in the Response to Comments sections of the notices.
`
`Further, the Office revised the Office Patent Trial Practice Guide based on the final rules. The Office has been working diligently
`to publish all of the final rules related to the new AIA trial proceedings and the Office Patent Trial Practice Guide in the
`Federal Register concurrently. Due to certain limitations, however, the Office Patent Trial Practice and the specific final rule
`for derivation proceedings will be published in the Federal Register after the other final rules. In particular, the specific rules
`for derivation, i.e., §§ 42.404 through 42.412, will be published at a later date.
`
`Statutory Requirements: The AIA provides certain minimum requirements for each of the new proceedings. Provided below
`is a brief overview of these requirements.
`
`Proceedings begin with the filing of a petition to institute a trial. The petition must be filed with the Board consistent with any
`time period required by statute and be accompanied by the evidence the petitioner seeks to rely upon. See, e.g., 35 U.S.C. 135(a)
`and 311(c), as amended, and § 42.3 (references to § 42.x or § 1.x refer to title 37 of the Code of Federal Regulations). For
`IPR, PGR, and CBM, the patent owner is afforded an opportunity to file a preliminary response. 35 U.S.C. 313, as amended,
`and 35 U.S.C. 323.
`
`The Board acting on behalf of the Director may institute a trial where the petitioner establishes that the standards for instituting
`the requested trial are met taking into account any preliminary response filed by the patent owner. Conversely, the Board may
`not authorize a trial where the information presented in the petition, taking into account any patent owner preliminary response,
`fails to meet the requisite standard for instituting the trial. See e.g., 35 U.S.C. 314, as amended, and 35 U.S.C. 324. Where
`there are multiple matters in the Office involving the same patent, the Board may determine how *48757 the proceedings will
`proceed, including providing for a stay, transfer, consolidation, or termination of any such matter. See, e.g., 35 U.S.C. 315,
`as amended, and 35 U.S.C. 325.
`
`The AIA requires that the Board conduct AIA trials and that the Director prescribe regulations concerning the conduct of those
`trials. 35 U.S.C. 6, 135, and 316, as amended, and 35 U.S.C. 326. For example, for IPR, PGR, and CBM, the AIA mandates
`the promulgation of rules including motions to seal, procedures for filing supplemental information, standards and procedures
`for discovery, sanctions for improper use of the proceeding, entry of protective orders, and oral hearings. See, e.g., 35 U.S.C.
`316(a), as amended, and 35 U.S.C. 326. Additionally, the AIA mandates the promulgation of rules for IPR, PGR, and CBM
`
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`Ex. 1008 02/34
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`Office Patent Trial Practice Guide, 77 FR 48756-01
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`concerning the submission of a patent owner response with supporting evidence and allowing the patent owner a motion to
`amend the patent. Id.
`
`A petitioner and a patent owner may terminate the proceeding with respect to the petitioner by filing a written agreement with
`the Board, unless the Board has already decided the merits of the proceeding before the request for termination is filed. See,
`e.g., 35 U.S.C. 317, as amended, and 35 U.S.C. 327. If no petitioner remains in the proceeding, the Board may terminate the
`review or proceed to a final written decision. For derivation proceedings, the parties may arbitrate issues in the proceeding,
`but nothing precludes the Office from determining the patentability of the claimed inventions involved in the proceeding. 35
`U.S.C. 135, as amended. Where a trial has been instituted and not dismissed, the Board will issue a final written decision with
`respect to the involved patent and/or applications. 35 U.S.C. 135 and 35 U.S.C. 318, as amended, and 35 U.S.C. 328.
`
`For IPR, PGR, and CBM, the AIA requires that the Office consider the effect of the regulations on the economy, the integrity of
`the patent system, the efficient administration of the Office, and the ability of the Office to timely complete the proceedings. 35
`U.S.C. 316, as amended, and 35 U.S.C. 326. In developing the general trial rules, as well as the specific rules for the individual
`proceedings, the Office has taken these considerations into account. Further, the specific rules for the individual proceedings
`take into account the jurisdictional and timing requirements for the particular proceedings.
`
`General Overview of Proceedings: Generally, the proceedings begin with the filing of a petition that identifies all of the claims
`challenged and the grounds and supporting evidence on a claim-by-claim basis. Within three months of notification of a filing
`date, the patent owner in an IPR, PGR, or CBM proceeding may file a preliminary response to the petition, including a simple
`statement that the patent owner elects not to respond to the petition. The Board acting on behalf of the Director will determine
`whether to institute a trial within three months of the date the patent owner's preliminary response was due or was filed,
`whichever is first.
`
`In instituting a trial, the Board will narrow the issues for final decision by authorizing the trial to proceed only on the challenged
`claims for which the threshold standards for the proceeding have been met. Further, the Board will identify, on a claim-by-
`claim basis, the grounds on which the trial will proceed. Any claim or issue not included in the authorization for review will
`not be part of the trial. A party dissatisfied with the Board's determination to institute a trial may request rehearing as to points
`believed to have been overlooked or misapprehended. See § 42.71(d) and (c).
`
`The Board will enter a Scheduling Order (Appendix A) concurrent with the decision to institute a trial. The Scheduling Order
`will set due dates for the trial taking into account the complexity of the proceeding but ensuring that the trial is completed
`within one year of institution.
`
`For example, a Scheduling Order for an IPR or PGR might, consistent with §§ 42.120 and 42.220, provide a three month deadline
`for patent owner discovery and for filing a patent owner response and motion to amend. Once the patent owner's response and
`motion to amend have been filed, the Scheduling Order might provide the petitioner with three months for discovery and for
`filing a petitioner's reply to the response and the petitioner's opposition to the amendment. The Scheduling Order might then
`provide the patent owner with one month for discovery and for filing a patent owner reply to petitioner's opposition to a patent
`owner amendment. A representative timeline is provided below:
`
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`Ex. 1008 03/34
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`Office Patent Trial Practice Guide, 77 FR 48756-01
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`Sequence of discovery. Once instituted, absent special circumstances, discovery will proceed in a sequenced fashion. For
`example, the patent owner may begin deposing the petitioner's declarants once the proceeding is instituted. After the patent
`owner has filed a patent owner response and any motion to amend the claims, the petitioner may depose the patent owner's
`declarants. Similarly, after the petitioner has filed a reply to the patent *48758 owner's response and an opposition to an
`amendment, the patent owner may depose the petitioner's declarants and file a reply in support of its claim amendments. Where
`the patent owner relies upon new declaration evidence in support of its amendments, the petitioner will be authorized to depose
`the declarants and submit observations on the deposition. Once the time for taking discovery in the trial has ended, the parties
`will be authorized to file motions to exclude evidence believed to be inadmissible. Admissibility of evidence is generally
`governed by the Federal Rules of Evidence.
`
`Sequence of filing responses and motions. An initial conference call will be held about one month from the date of institution to
`discuss the motions that the parties intend to file and to determine if any adjustment needs to be made to the Scheduling Order.
`The patent owner may file a patent owner's response and/or a motion to amend the claims by the time set in the Scheduling
`Order. The petitioner will then file a reply to the patent owner's response and any opposition to the patent owner's amendment.
`Both parties will then be permitted an opportunity to file motions to exclude an opponent's evidence believed to be inadmissible.
`After all motions have been filed, the parties will be afforded an opportunity to have an oral argument at the Board.
`
`Summary of the Rules: The following is a general summary of the rules for the proceedings.
`
`I. General Procedures
`The rules are to be construed so as to ensure the just, speedy, and inexpensive resolution of a proceeding and, where appropriate,
`the rules may be modified to accomplish these goals. § 42.1(b); § 42.5(a) and (b).
`
`A. Jurisdiction and Management of the Record
`1. Jurisdiction: 35 U.S.C. 6(b), as amended, provides that the Board is to conduct derivation proceedings, inter partes reviews,
`and post-grant reviews. The Board also conducts the transitional program for covered business method reviews, which are
`subject to Board review under 35 U.S.C. 6(b), as amended, 35 U.S.C. 326(c), and Public Law 112-29, section 18. The Board
`therefore will have exclusive jurisdiction within the Office over every application and patent that is involved in a derivation, IPR,
`PGR, or CBM proceeding. Ex parte reexamination proceedings and inter partes reexamination proceedings are not “involved”
`patents (as defined in § 42.2) in derivation, IPR, PGR, and CBM proceedings and are thus treated separately except as ordered
`by the Board.
`
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`4
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`Ex. 1008 04/34
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`Office Patent Trial Practice Guide, 77 FR 48756-01
`
`2. Prohibition on Ex Parte Communications: All substantive communications with the Board regarding a proceeding must
`include all parties to the proceeding, except as otherwise authorized. § 42.5(d). The prohibition on ex parte communications
`does not extend to: (1) Ministerial communications with support staff (for instance, to arrange a conference call); (2) conference
`calls or hearings in which opposing counsel declines to participate; (3) informing the Board in one proceeding of the existence
`or status of a related Board proceeding; or (4) reference to a pending case in support of a general proposition (for instance,
`citing a published opinion from a pending case or referring to a pending case to illustrate a systemic problem).
`
`Arranging a conference call with the Board. The Board encourages the use of conference calls to raise and resolve issues in an
`expedited manner. The Board envisions that most of the procedural issues arising during a proceeding will be handled during
`a conference call or shortly thereafter, i.e., in a matter of days. When arranging a conference call, parties should be prepared to
`discuss with a Trial Section paralegal why the call is needed and what materials may be needed during the call, e.g., a particular
`exhibit.
`
`Refusal to participate. The Board has the discretion to permit a hearing or conference call to take place even if a party refuses
`to participate. In such cases, the Board may order as a condition for the call additional safeguards, such as the recording of the
`communication and the entry of the recording into the record.
`
`B. Counsel
`Need for lead and back-up counsel. A party represented by counsel must designate both a lead as well as a back-up counsel who
`can conduct business on behalf of the lead counsel, as instances may arise where lead counsel may be unavailable. § 42.10(a).
`
`Power of attorney. A power of attorney must be filed with the designation of counsel, unless the designated counsel is already
`counsel of record. § 42.10(b).
`
`Pro hac vice. The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, and subject
`to the requirement that lead counsel is a registered practitioner. § 42.10(c). The Board may impose other considerations as
`well. Id. Proceedings before the Office can be technically complex. For example, it is expected that amendments to a patent
`will be sought. The grant of a motion to appear pro hac vice is a discretionary action taking into account the specifics of the
`proceedings. Similarly, the revocation of pro hac vice is a discretionary action taking into account various factors, including
`incompetence, unwillingness to abide by the Office's Rules of Professional Conduct, and incivility.
`
`The Office expects that lead counsel will, and back-up counsel may, participate in all hearings and conference calls with the
`Board and will sign all papers submitted in the proceeding. In addition, the role of back-up counsel is to conduct business with
`the Office on behalf of lead counsel when lead counsel is not available. Actions not conducted before the Office (e.g., taking
`of deposition) may be conducted by lead or back-up counsel.
`
`C. Electronic Filing
`Electronic filing is the default manner in which documents are to be filed with the Board. § 42.6(b). Electronic filing of legal
`documents is being implemented across the country in state and federal courts. The use of electronic filing aids in the efficient
`administration of the proceeding, improves public accessibility, and provides a more effective document management system for
`the Office and parties. The manner of submission will be established by the Board. The Board will publish electronic submission
`information on its Web site (www.uspto.gov/PTAB) in August of 2012. Due to system constraints, no single uploaded file may
`exceed 250 megabytes in size.
`
`Paper filing may be used where appropriate, but must be accompanied by a motion explaining the need for non-electronic
`filing. § 42.6(b). Based upon experience with contested cases, the Board does not expect to receive many requests to file paper
`submissions. Circumstances where a paper filing may be warranted include those occasions where the Office's electronic filing
`
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`system is unable to accept filings. Alternatively, if a problem with electronic filing arises during normal business hours, a party
`may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board. § 42.5. In
`the unlikely event that an administrative patent judge is not available to rule on the extension, the Board may grant an extension
`the day after the paper is due, which includes situations where electronic filing problems are shown to have occurred.
`
`*48759 D. Mandatory Notices
`The rules require that parties to a proceeding provide certain mandatory notices, including identification of the real parties-in-
`interest, related matters, lead and back-up counsel, and service information. § 42.8. Where there is a change of information, a
`party must file a revised notice within 21 days of the change. § 42.8(a)(3).
`
`1. Real Party-in-Interest or Privy: The core functions of the “real party-in-interest” and “privies” requirement to assist members
`of the Board in identifying potential conflicts, and to assure proper application of the statutory estoppel provisions. The latter,
`in turn, seeks to protect patent owners from harassment via successive petitions by the same or related parties, to prevent parties
`from having a “second bite at the apple,” and to protect the integrity of both the USPTO and Federal Courts by assuring that
`all issues are promptly raised and vetted. Cf. Fed. R. Civ. P. 17(a) (Advisory Committee Note to 1966 Amendment to Rule
`17(a)) (“[T]he modern function of the rule in its negative aspect is simply to protect the defendant against a subsequent action
`by the party actually entitled to recover, and to insure generally that the judgment will have its proper effect as res judicata.”).
`The USPTO will apply traditional common-law principles with these goals in mind and parties will be well-served to factor in
`these considerations when determining whom to identify.
`
`Whether a party who is not a named participant in a given proceeding nonetheless constitutes a “real party-in-interest” or “privy”
`to that proceeding is a highly fact-dependent question. See generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A Charles Alan
`Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4449, 4451 (2d ed. 2011) (hereinafter “Wright
`& Miller”). Such questions will be handled by the Office on a case-by-case basis taking into consideration how courts have
`viewed the terms “real party-in-interest” and “privy.” See, e.g., Taylor, 553 U.S. at 893-895 and 893 n.6 (noting that “[t]he list
`that follows is meant only to provide a framework [for the decision], not to establish a definitive taxonomy”). Courts invoke the
`terms “real party-in-interest” and “privy” to describe relationships and considerations sufficient to justify applying conventional
`principles of estoppel and preclusion. Accordingly, courts have avoided rigid definitions or recitation of necessary factors.
`Similarly, multiple Federal Rules invoke the terms without attempting to define them or what factors trigger their application.
`See, e.g., Fed. R. Civ. P. 17; Fed. Cir. R. 47.4.
`
`The typical common-law expression of the “real party-in-interest” (the party “who, according to the governing substantive law,
`is entitled to enforce the right”) does not fit directly into the AIA trial context. See 6A Charles Alan Wright, Arthur R. Miller,
`Mary Kay Kane, & Richard L. Marcus, Federal Practice & Procedure Civil section 1543 (3d ed. 2011) (discussing Fed. R. Civ.
`P. 17). That notion reflects standing concepts, but no such requirement exists in the IPR or PGR context, although it exists
`in the CBM context. In an IPR or PGR proceeding, there is no “right” being enforced since any entity (other than the patent
`owner) may file an IPR or PGR petition. However, the spirit of that formulation as to IPR and PGR proceedings means that, at a
`general level, the “real party-in-interest” is the party that desires review of the patent. Thus, the “real party-in-interest” may be
`the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed. In this regard, the Office's
`prior application of similar principles in the inter partes reexamination context offers additional guidance. See generally In re
`Guan et al. Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing Date (Aug. 25, 2008).
`Similar considerations apply to CBM proceedings, although the statute governing those proceedings also requires that the party
`seeking the proceeding, or its real party-in-interest or privy, have been sued for infringing the subject patent, or been charged
`with infringement under that patent.
`
`The notion of “privity” is more expansive, encompassing parties that do not necessarily need to be identified in the petition
`as a “real party-in-interest.” The Office intends to evaluate what parties constitute “privies” in a manner consistent with the
`flexible and equitable considerations established under federal caselaw. Ultimately, that analysis seeks to determine whether
`the relationship between the purported “privy” and the relevant other party is sufficiently close such that both should be bound
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` © 2013 Thomson Reuters. No claim to original U.S. Government Works.
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`6
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`Ex. 1008 06/34
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`Office Patent Trial Practice Guide, 77 FR 48756-01
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`by the trial outcome and related estoppels. This approach is consistent with the legislative history of the AIA, which indicates
`that Congress included “privies” within the parties subject to the statutory estoppel provisions in an effort to capture “the
`doctrine's practical and equitable nature,” in a manner akin to collateral estoppel. In that regard, the legislative history endorsed
`the expression of “privy” as follows:
`
`The word “privy” has acquired an expanded meaning. The courts, in the interest of justice and to prevent expensive litigation,
`are striving to give effect to judgments by extending “privies” beyond the classical description. The emphasis is not on the
`concept of identity of parties, but on the practical situation. Privity is essentially a shorthand statement that collateral estoppel
`is to be applied in a given case; there is no universally applicable definition of privity. The concept refers to a relationship
`between the party to be estopped and the unsuccessful party in the prior litigation which is sufficiently close so as to justify
`application of the doctrine of collateral estoppel.
`
`154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (citing Cal. Physicians' Serv. v. Aoki Diabetes Research
`Inst., 163 Cal.App.4th 1506 (Cal. App. 2008)); see also 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (incorporating prior 2008
`statement). Subsequent legislative history expanded on the prior discussion of “privy” by noting that “privity is an equitable
`rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to
`the property in question.” 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`There are multiple factors relevant to the question of whether a non-party may be recognized as a “real party-in-interest”
`or “privy.” See, e.g., Taylor, 553 U.S. at 893-895 and 893 n.6 (noting that “[t]he list that follows is meant only to provide
`a framework [for the decision], not to establish a definitive taxonomy”). A common consideration is whether the non-party
`exercised or could have exercised control over a party's participation in a proceeding. See, e.g., id. at 895; see generally Wright
`& Miller section 4451. The concept of control generally means that “it should be enough that the nonparty has the actual measure
`of control or opportunity to control that might reasonably be expected between two formal coparties.” Wright & Miller § 4451.
`Courts and commentators agree, however, that there is no “bright-line test” for determining the necessary quantity or degree
`of participation to qualify as a “real party-in-interest” or “privy” based on the control concept. Gonzalez v. Banco Cent. Corp.,
`27 F.3d 751, 759 (1st Cir. 1994). See also Wright & Miller section 4451 (“The measure of control by a nonparty that justifies
`preclusion cannot be defined rigidly.”). Accordingly, the rules do not enumerate particular factors regarding a “control” theory
`of “real party-in-interest” or “privy” under the statute.
`
`Additionally, many of the same considerations that apply in the context of “res judicata” will likely apply in the *48760
`“real party-in-interest” or “privy” contexts. See Gonzalez, 27 F.3d at 759; see generally Wright & Miller section 4451. Other
`considerations may also apply in the unique context of statutory estoppel. See generally, e.g., In re Arviv Reexamination
`Proceeding, Control No. 95/001,526, Decision Dismissing section 1.182 and section 1.183 Petitions, at 6 (Apr. 18, 2011); In
`re Beierbach Reexamination Proceeding, Control No. 95/000,407, Decision on section 1.182 and section 1.183 Petitions, at 6
`(July 28, 2010); In re Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206, Decision Dismissing Petition,
`at 5 (June 22, 2010); In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing
`Date, at 8 (Aug. 25, 2008).
`
`The Office has received requests to state whether particular facts will qualify a party as a “real party-in-interest” or “privy.”
`Some fact-combinations will generally justify applying the “real party-in-interest” or “privy” label. For example, a party that
`funds and