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`SCRIPH‘.
`
`FEDERAL REGISTER
`
`Vol. 77
`
`No. 157
`
`Tuesday,
`
`August 14, 2012
`
`Part III
`
`Department of Commerce
`
`Patent and Trademark Office
`37 CFF1 Part 42
`
`inter Partes Review Proceedings, Post-Grant
`Changes to Implement
`Review Proceedings, and Transitionai Program for Covered Business
`Method Patents; Final Rule
`
`REDLINE EXHIBIT 1046
`Redline v. Star
`Trial IPR2013-00106
`p.1046-1
`
`

`
`48680
`Federal Register/Vol. 77. No. 157/Tuesday, August 14, 2012/Rules and Regulations-
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Part 42
`
`[Docket No. PTO-P-2011-0083]
`FIIN D651-AC71
`
`Changes to Implement Inter Partes
`Review Proceedings, Post-Grant
`Review Proceedings, and Transitional
`Program for Covered Business Method
`Patents
`
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Final rule.
`
`SUMMARY: The United States Patent and
`Trademark Office [Office or USPTO} is
`revising the rules of practice to
`implement the provisions of the Leahy~
`Smith America invents Act (“AIA"] that
`create the new inter partes review
`proceeding, post~grant review
`proceeding, and transitional post-grant
`review proceeding for covered business
`method patents, to be conducted before
`the Patent Trial and Appeal Board
`[Board]. These provisions of the AIA
`will take effect on September 16, 2012,
`one year after the date of enactment.
`DATES: E_ffecti've Date: September 16,
`2012.
`
`Applicability Dates: The changes for
`inter partes review proceedings apply to
`any patent issued before, on, or after
`September '16. 2012 [subpart B].
`The changes for post-grant review
`proceedings generally apply to patents
`issuing from applications subject to
`first-inventor—to-file provisions of the
`AIA [subpart C]. In addition, the Chief
`Administrative Patent ludge may. in the
`interests—of—justice, order an
`interferences commenced before
`September 16. 2012, to be dismissed
`without prejudice to the filing of a
`petition for post-grant review. See
`42.200[d] and §B[t][[3][A] of the AIA.
`The changes for transitional program
`for covered business method patents
`apply to any covered business method
`patent issued before. on, or after
`September 18. 2012 [subpart D].
`FOR FURTHER INFORMATION CONTACT:
`
`Michael P. ‘Tierney. Lead
`Administrative Patent Judge. Sally G.
`Lane. Administrative Patent fudge, Sally
`C. Medley, Administrative Patent ludge.
`Robert A. Clarke. Administrative Patent
`
`Judge. and Joni Y. Chang,
`Administrative Patent Judge, Board of
`Patent Appeals and interferences, by
`telephone at [571] 272-9797.
`SUPPLEMENTARY INFORMATION: Executive
`
`Summary: Purpose: On September 16,
`2011. the AIA was enacted into law
`
`{Pub. L. 112-29. 125 Stat. 234 {2o11}).
`The purpose of the AIA and this final
`rule is to establish a more efficient and
`
`streamlined patent system that will
`improve patent quality and limit
`unnecessary and counterproductive
`litigation costs. The preamble of this
`notice sets forth in detail the procedures
`by which the Board will conduct inter
`partes review proceedings, post—grant
`review proceedings. and transitional
`post-grant review proceedings for
`covered business method patents. The
`USPTO is engaged in a transparent
`process to create a timely. cost—effective
`alternative to litigation. Moreover, the
`rules are designed to ensure the
`integrity of the trial procedures. See 35
`U.S.C. 316[b], as amended, and 35
`U.S.C. 326[b]. This final rule would
`provide a set of rules relating to Board
`trial practice for inter partes review
`proceedings. post-grant review
`proceedings, and transitional post-grant
`review proceedings for covered business
`method patents.
`Summary of Major Provisions:
`Consistent with section 6 of the AIA,
`this final rule sets forth for inter partes
`review: [1] The requirements for a
`petition to institute an inter partes
`review ofa patent; [2] the standards for
`showing of sufficient grounds to
`institute an inter partes review: [3] the
`standards for instituting an inter paries
`review; [4] the procedures for
`conducting an inter partes review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing: [5] the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and [6] the time periods for
`completing the review [subpart B of 37
`CFR part 42].
`Consistent with section 6 of the AIA.
`this final rule sets forth for post—grant
`review: [1] The requirements for a
`petition to institute a post-grant review
`ofa patent: [2] the standards for
`showing of sufficient grounds to
`institute a post-grant review: [{3} the
`standards for instituting a postwgrant
`review; [4] the procedures for
`conducting a post-grant review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing; [5] the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and [B] the time periods for
`completing the review (subpart C of 37
`CFR part 42].
`Consistent with sections 6 and 18 of
`the AIA. this final rule further sets forth
`for transitional post~graut review of
`covered business method patents: [1]
`The requirements for a petition to
`institute a post~grant review of a
`
`covered business method patent; [2] the
`standards for showing of sufficient
`grounds to institute a post-grant review
`of a covered business method patent; [3]
`the standards for instituting a post—grant
`review of a covered business method
`
`patent; [4] the procedures for
`conducting a post-grant review that
`permits a patent owner response, a
`submission of written comments, and an
`oral hearing: [5] the standards and
`procedures for discovery and for the
`patent owner to move to amend the
`patent; and [6] the time periods for
`completing the review [subpart D of 37
`CFR part 42].
`Costs and Benefits: This rulemaking is
`not economically significant, but is
`significant, under Executive Order
`12866 (Sept. 30, 1993], as amended by
`Executive Order 13258 {Feb 26. 2002]
`and Executive Order 1 3422 []an. ‘I8.
`2007].
`Baclcground: To implement sections 6
`and 18 of the ALA, the Office published
`the following notices of proposed
`ruiemaking: [1] Rules of Practice for
`Trials before the Patent Trial and
`Appeal Board and Judicial Review of
`Patent Trial and Appeal Board
`Decisions, 77 FR 6879 [F’eh. 9. 2012]. to
`provide a consolidated set of rules
`relating to Board trial practice for inter
`pmies review, post—grant review,
`derivation proceedings, the transitional
`program for covered business method
`patents, and judicial review of Board
`decisions by adding new parts 42. and
`90 including a new subpart A to title 37
`of the Code of Federal Regulations [RIN
`065‘l—AC70]; [2] Changes to lmplemeni
`Inter Partes Review Proceedings, 77 FR
`7041 [Feb. 10, 2.012}. to provide rules
`specific to inter pnrtes review by adding
`a new subpart B to 37 CFR part 42 [RIN
`OEi51—AC71]; [3] Changes to Implement
`Post-Grant Review Proceedings, 77 FR
`7060 [Feb. '10, 2012], to provide rules
`specific to post~grant review by adding
`a new subpart C to 37 CFR part 42 {RIN
`0B5'l—AC72}; [4} Changes to Implement
`Transitional Program for Covered
`Business Method Patents, 77 FR 7080
`(Feb. 10. 2012]. to provide rules specific
`to the transitional program for covered
`business method patents by adding a
`new subpart D to 37 CFR part 42 (RIN
`0651—AC73]; [5] Transitional Prograin
`for Covered Business Method Patenrs—
`Definition of Technological lnvention,
`77 FR 7095 (Feb. 10. 2012]. to add a new
`rule that sets forth the definition of
`
`technological invention for determining
`whether a patent is for a technological
`invention solely for purposes of the
`transitional program for covered
`business method patents [RIN 0651-
`AC75]; a11d [6] Changes to Implement
`Derivation Proceedings, 77 FR 7028
`
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`48729
`Federal Register/Vol. 77. No. 157/ Tuesday, August 14, 2012/Rules and Regulations
`
`substitute claim would be needed to
`replace each challenged claim, and it
`may be rebutted by a demonstration of
`need.
`[bl Content. A motion to amend
`claims must include a claim listing.
`show the changes clearly. and set forth:
`[1] The support in the original
`disclosure of the patent for each claim
`that is added or amended: and
`[2] The support in an earlier—filed
`disclosure for each claim for which
`benefit of the filing date of the earlier
`filed disclosure is sought.
`[c] Additional motion to amend. In
`addition to the requirements set forth in
`paragraphs (a) and [b} of this section,
`any additional motion to amend may
`not be filed without Board
`authorization. An additional motion to
`amend may be authorized when there is
`a good cause showing or a joint request
`of the petitioner and the patent owner
`to materially advance a settlement. In
`determining whether to authorize such
`an additional motion to amend, the
`Board will consider whether a petitioner
`has submitted supplemental
`information after the time period set for
`filing a motion to amend in paragraph
`[a][1] of this section.
`
`1542.122 Multiple proceedings and Joinder.
`[a] Multiple proceedings. Where
`another matter involving the patent is
`before the Office. the Board may during
`the pendency of the inter portes review
`enter any appropriate order regarding
`the additional matter including
`providing for the stay. transfer,
`consolidation, or termination of any
`such matter.
`
`(bl Requestfor joinder. Joinder may be
`requested by a patent owner or
`petitioner. Any request for joinder must
`be filed, as a motion under §42.22. no
`later than one month after the
`institution date of any inter portes
`review for which joinder is requested.
`The time period set forth in § 42.101{b)
`shall not apply when the petition is
`accompanied by a request for joinder.
`
`§42.123 Filing of supplemental
`information.
`
`(a] Motion to submit supplemental
`information. Once a trial has been
`instituted. a party may file a motion to
`submit supplemental information in
`accordance with the following
`re uirements:
`1] A request for the authorization to
`file a motion to submit supplemental
`information is made within one month
`of the date the trial is instituted.
`[2] The supplemental information
`must be relevant to a claim for which
`the trial has been instituted.
`[bl Late submission ofsupplemenlol
`information. A party seeking to submit
`supplemental information more than
`
`one month after the date the trial is
`instituted. must request authorization to
`file a motion to submit the information.
`
`The motion to submit supplemental
`information must show why the
`suppiemental information reasonably
`could not have been obtained earlier.
`and that consideration of the
`supplemental information would be in
`the interests~of-justice.
`[C] Other‘ supplemental information.
`A party seeking to submit supplemental
`information not relevant to a claim for
`which the trial has been instituted must
`request authorization to file a motion to
`submit the information. The motion
`must show why the supplemental
`information reasonably could not have
`been obtained eariier, and that
`consideration of the supplemental
`information would be in the interests-of-
`justice.
`I 3. Add subpart C to read as foilows:
`Subpart C—Post-Grant Review
`General
`Sec.
`42.200 Procedure; pendency.
`42.201 Who may petition for a post-grant
`review.
`
`42.202 Time for filing.
`42.203 Post-grant review fee.
`42.204 Content of petition.
`42.205 Service ofpetition.
`42.206 Filing date.
`42.207
`l‘re|iminary response to petition.
`lnstituting Post-Grant Review
`42.208
`Institution of post-grant review.
`After Institution of Post-Grant Review
`42.220
`42.221
`42.222
`42.223
`42.224
`
`Patent owner response.
`Amendment of the patent.
`Multiple proceedings.
`Filing of supplemental information.
`Discovery.
`
`Subpart C—Post-Grant Review
`General
`
`§42.20O Procedure; pendency.
`[a] A post-grant review is a trial
`subject to the procedures set forth in
`subpart A of this part.
`{b] A claim in an unexpired patent
`shall be given its broadest reasonable
`construction in light ofthe specification
`ofthe patent in which it appears.
`(c] A post-grant 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 Iudge. or
`adjusted by the Board in the case of
`joinder.
`[d] lnterferences commenced before
`September 16. 2012. shall proceed
`under part 41 of this chapter except as
`the Chief Administrative Patent Judge,
`acting on behalf of the Director. may
`
`otherwise order in the interests-of
`justice.
`
`§42.201 Who may petition for a post-grant
`review.
`
`A person who is not the owner ofa
`patent may file with the Office a
`petition to institute a post-grant review
`of the patent unless:
`[a] Before the date on which the
`petition for review is filed, the
`petitioner or real party-in-interest filed
`a civil action challenging the validity of
`a claim ofthe patent; or
`[b] The petitioner. the petitioner's real
`party-in-interest. or a privy ofthe
`petitioner is estopped from challenging
`the claims on the grounds identified in
`the petition.
`
`§ 42.202 Time for filing.
`
`[a] A petition for a post-grant review
`of a patent must be filed no later than
`the date that is nine months after the
`
`date of the grant of a patent or of the
`issuance of a reissue patent. A petition,
`however, may not request a post-grant
`review for a claim in a reissue patent
`that is identical to or narrower than a
`
`claim in the originai patent from which
`the reissue patent was issued unless the
`petition is fiied not later than the date
`that is nine months after the date ofthe
`grant of the original patent.
`{b] The Director may impose a limit
`on the number of post-grant reviews that
`may be instituted during each ofthe
`first four one-year periods in which 35
`U.S.C. 321 is in effect by providing
`notice in the Office's Official Gazette or
`
`Federal Register. Petitions filed after an
`established limit has been reached will
`be deemed untimely.
`
`§ 42.203 Post-grant review fee.
`
`[a] A post-grant review fee set forth in
`§ 42.15(b) must accompany the petition.
`[b] No filing date will be accorded to
`the petition until full payment is
`received.
`
`§ 42.204 Content of petition.
`
`In addition to the requirements of
`42.6, 42.8. 42.22. and 42.24. the
`petition must set forth:
`[a] Grounds for standing. The
`petitioner must certify that the patent
`for which review is sought is available
`for post-grant review and that the
`petitioner is not barred or estopped from
`requesting a post-grant review
`challenging the patent claims on the
`grounds identified in the petition.
`{b] Identification ofcltollenge. Provide
`a statement of the precise relief
`requested for each claim challenged.
`The statement must identify the
`following:
`[iii The claim:
`
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`48681
`Federal RegisterfVol. 77. N0. 157/Tuesday, August 14, 2012/Rules and Regulations
`
`[Feb. 10. 2012}. to provide rules specific
`to derivation proceedings by adding a
`new subpart E to 37 CFR part 42 [RIN
`U55'i—AC7I~l].
`This final rule adopts the proposed
`rules. wit.h modifications, set forth in
`the three notices of proposed
`rulemaking: Inter partes review
`proceedings (77 FR 7041), post~grant
`review proceedings [77 FR 7660], and
`transitional post-grant review
`proceedings for covered business
`method patents (77 FR 7080}, except for
`definitions of the terms “covered
`business method patent” and
`“technological invention" which are set
`forth in a separate final rule [RIN 0651-
`AC75]. The definition of the term
`"technological invention" was proposed
`in another notice of proposed
`rulemaking [77 FR 7095].
`In a separate final rule, the Office
`adopts the proposed rules, with
`modifications. set forth in Rules of
`Practice for Trials before the Patent
`Trial and Appeal Board andludiciol
`Review of Patent Trial and Appeal
`Board Decisions, 77 FR 6879 [Feb. 9,
`2012]. to provide a consolidated set of
`rules relating to Board trial practice for
`inter partes review, post-grant review,
`derivation proceedings, and the
`transitional program for covered
`business method pat.ents, and judicial
`review of Board decisions by adding
`new parts 42 and 90 including a new
`subpart A to title 37 of the Code of
`Federal Reoulations [RIN O651—AC70].
`in a third final rule, the Office adopts
`the proposed definitions of a “covered
`business method patent" and
`"technological invention" set forth in
`the following notices of proposed
`rulemaking: Changes to Implement
`Transitional Program for Covered
`Business Method Patents. 77 FR 7080
`(Feb. 10, 2012); and Transitional
`Program for Covered Business Method
`Potents—Definition of Technological
`Invention, 77 FR 7095 [Feb. 10. 2012].
`Additionally, the Office published a
`Patent Trial Practice Guide for the
`
`proposed 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
`Cuide"]. The Office envisions
`publishing a revised Patent Trial
`Practice Guide for the final rules. The
`Office also hosted a series of public
`educational roadsiiows, across the
`country, regarding the proposed rules
`for the implementation of the AIA.
`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 ofthe
`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 comrnents
`thoroughly. The Office's responses to
`the comments are provided in the 124
`separate responses based on the topics
`raised in the 251 comments in the
`
`Response to Comments section infra.
`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 ofthe Office,
`and the ability of the Office to complete
`the proceedings timely.
`Differences between the Final Rule and
`the Proposed Rule
`The major differences between the
`rules as adopted in this final rule and
`the ro osed rules include:
`T e inal rule clarifies that the one-
`
`year period for completing an inter
`partes or post-grant review may be
`adjusted by the Board in the case of
`joinder (§§ 42.100{c] and 42.2OU[c)].
`The final rule clarifies that a
`
`petitioner must certify that it is not
`estopped from requesting an inter partes
`or post-grant review for the challenged
`claims, as opposed to the patent
`42.104[a) and 42.204(a]).
`The final rule eliminates the
`
`requirement that the petitioner must
`contact the Board to discuss alternate
`
`modes of service when the petitioner
`cannot effect service of the petition for
`inter partes. post-grant and covered
`business method patent reviews
`[§§42.105(b) and 42.2U5[b)]. Instead, the
`final rule further clarifies that (1) upon
`agreement of the parties, service may be
`made electronically, [2] personal service
`is not required, and [3] service may be
`by EXPRESS MAIL-*3‘ or by means at
`least as fast and reliable as EXPRESS
`MAlL®
`42.1U5[l)) and 42.205[b)}.
`The time period for filing a patent
`owner preliminary response for inter
`partes, postwgrant and covered business
`method patent reviews is extended from
`two months to three months
`[§-§ 42.107[b] and 42.2{)7[b]). Likewise.
`the default time period for filing a
`
`patent owner response is extended from
`two months to three months
`[§§42.120[b] and 42.220{lJ]].
`With respect to motions to amend
`challenged claims. the final rule
`clarifies that a patent owner may file
`one motion to amend but only after
`conferring with the Board. and it must
`be filed no later than the filing of a
`patent owner response for inter partes.
`post—grant and covered business method
`patent reviews [§§ 42.1 21[a] and
`42.221[a]]. The final rule provides that
`an additional motion to amend may be
`authorized during inter partes, post-
`grant and covered business method
`patent reviews when there is a good
`cause showing or a settlement
`{§§ 42.121{c) and 42.221[c]]. In addition.
`the filial rule clarifies that a reasonable
`number of substitute claims is presumed
`to be one substitute claim per
`challenged claim. which may be
`rebutted by a demonstration of need.
`The final rule further clarifies that a
`
`motion to amend may be denied where:
`[1} The amendment does not respond to
`a ground of unpatentabilit_v, or [2] the
`amendment seeks to enlarge the scope
`of the claims of the patent or introduce
`new subject matter [§§42.121[a) and
`42.221[a}]. The final rule also clarifies
`that an additional motion to amend may
`be authorized when there is a good
`cause showing or a joint request of the
`petitioner and the patent owner to
`materially advance a settlement
`[§§ 42.121(c} and 42.22‘1[c)]. Moreover.
`the final rule provides that in
`determining whether to authorize such
`an additional motion to amend, the
`Board will consider whether a petitioner
`has submitted supplemental
`information after the time period set for
`filing a motion to amend in
`§42.121[a)[1] or 42.221[a]['1}.
`For joinder, the final rule clarifies that
`a joinder may be requested by a patent
`owner or petitioner during inter portes.
`post~grant or covered business method
`patent reviews, but provides that such a
`request must be filed. as a motion, no
`later than one month after institution of
`any review for which joinder is
`requested (§§ 42.12203] and 42.222[b]].
`With respect to inter partes reviews, the
`time period set forth in §42.101[b] does
`not apply when the petition is
`accompanied by a request for joinder
`42.122}.
`As to filing a supplemental
`information during inter portes, post-
`grant and covered business method
`patent reviews, the final rule clarifies
`that a request for the authorization to
`file a motion to submit supplement
`information is made within one month
`of the date the trial is instituted, and the
`information must be relevant to a claim
`
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`
`for which the trial has been instituted
`[§§42.123[aJ and 42.223[a]). A
`petitioner who seeks to submit late
`information. or information that is not
`relevant to a claim under review, will be
`required to show why the information
`reasonably could not have been earlier
`obtained. and that consideration of the
`information would be in the interestsvoil
`justice [§§42.123[h]—[c], 42.223[b]—[c)].
`For covered business method patent
`reviews, the final rule defines the term
`
`"charged with infringement" to mean “a
`real and substantial controversy
`regarding infringement ofa covered
`business method patent such that the
`petitioner would have standing to bring
`a declaratory judgment action in Federal
`court" (§ 42.302[a)). In addition, the
`final rule clarifies that a petitioner may
`challenge a claim based on the specific
`statutory grounds permitted under 35
`U.S.C. 282{b][2] or [3]. except as
`modified by section 18{a][1](C} of the
`AIA [§ <I»2.304[b]}.
`Discussion of Relevant Provisions of the
`AIA
`
`Inter Partes Review
`
`Section 6 ofthe AIA is entitled
`“POST~GRANT REVIEW
`PROCEEDINGS" [Pub. l... 112-29, 125
`Stat. 284. 29Q—305 [2011]]. Section 6(a)
`of the AIA, entitled “INTER PARTES
`REVIEW," amends chapter 31 of title 35,
`United States Code. also entitled
`“INTER PARTES REVIEVV." In
`particular, section 6(a) of the AIA
`amends 35 U.S.C. 311-318 and adds 35
`U.S.C. 319.
`Section B[a} of the AIA amends 35
`U.S.C. 311. entitled “Inter partes
`review." 35 U.S.C. 311[a]. as amended.
`provides that, subject to the provisions
`ofchapter 31 oftitle 35, United States
`Code, a person who is not the owner of
`a patent may file a petition with the
`Office to institute an inter portes review
`of the patent. As amended, 35 U.S.C.
`311[a] also provides that the Director
`wiil establish, by regulation. fees to be
`paid by the person requesting the
`review, in such amounts as the Director
`determines to be reasonable,
`considering the aggregate costs of the
`review. 35 U.S.C. 311(b], as amended.
`provides that a petitioner in an inter
`partes review may request to cancel as
`unpatentable one or more claims of a
`patent only on a ground that could be
`raised under 35 U.S.C. 102 or 103 and
`
`only on the basis ofprior art consisting
`ofpatents or printed publications. As
`amended, 35 U.S.C. 311(c] provides that
`a petition for inter portes review may be
`filed after the later of either: (1) The date
`that is nine months after the grant of a
`patent or issuance of a reissue of a
`
`patent; or (2) if a post-grant review is
`instituted under chapter 32 of title 35,
`United States Code. the date of the
`termination of that post-grant review.
`The grounds for seeking an inter
`portes review will be limited compared
`with post~grant review. The grounds for
`seeking inter ports-s review are limited
`to issues raised under 35 U.S.C. 102 or
`
`103 and only on the basis of prior art
`consisting of patents or printed
`publications. In contrast, the grounds
`for seeking post-grant review include
`any ground that could be raised under
`35 U.S.C. 282(b][2] or [3]. Such grounds
`for post-grant review include grounds
`that could be raised under 35 U.S.C. 102
`or 103 including those based on prior
`art consisting of patents or printed
`publications. Other grounds avaiiable
`for post-grant review include 35 U.S.C.
`101 and 112, with the exception of
`compliance with the best mode
`requirement.
`Section 6(a) of the AIA amends 35
`U.S.C. 312, entitled "Petitions." 35
`U.S.C. 312[a]. as amended. provides that
`a petition filed under 35 U.S.C. 311, as
`amended. may be considered only if
`certain conditions are met. First. the
`petition must be accompanied by
`payment of the fee established by the
`Director under 35 U.S.C. 311, as
`amended. Second, the petition must
`identify all real parties in interest.
`Third. the petition must identify, in
`writing and with particularity. each
`claim challenged, the grounds on which
`the challenge to each claim is based.
`and the evidence that supports the
`grounds for the challenge to each claim.
`including: [A] Copies ofpatents and
`printed publications that the petitioner
`relies upon in support of the petition
`and [B] affidavits or declarations of
`supporting evidence and opinions. if the
`petitioner relies on expert opinions.
`Fourth, the petition must provide such
`other information as the Director may
`require by regulation. Fifth. the
`petitioner must provide copies of any of
`the documents required under
`paragraphs [2]. [3], and {4} of35 U.S.C.
`312[a]. as amended. to the patent owner
`or, if applicable. the designated
`representative of the patent owner. 35
`U.S.C. 312[b], as amended. provides
`that. as soon as practicable after the
`receipt of a petition under 35 U.S.C.
`311, as amended, the Director will make
`the petition available to the public.
`Section 6(3) of the AIA amends 35
`U.S.C. 313. entitled “Preliminary
`response to petition." 35 U.S.C. 313. as
`amended. provides that, if an inter
`ponies review petition is filed under 35
`U.S.C. 311, as amended, within a time
`period set by the Director, the patent
`owner has the right to file a preliminary
`
`response to the petition that sets forth
`reasons why no inter portes review
`should be instituted based upon the
`failure of the petition to meet any
`requirement of chapter 31 of title 35,
`United States Code.
`Section 6(a) of the AIA amends 35
`U.S.C. 31.4. entitled “Institution of inter
`partes review." 35 U.S.C. 314(a), as
`amended, provides that the Director
`may not authorize an inter portes review
`to be instituted. unless the Director
`determines that the information
`presented in the petition filed under 35
`U.S.C. 311, as amended, and any
`response filed under 35 U.S.C. 313, as
`amended. shows that there is a
`reasonable likeiihood that the petitioner
`would prevail with respect to at least
`one of the claims challenged in the
`petition. 35 U.S.C. 314(b), as amended,
`provides that the Director will
`determine whether to institute an inter
`ports-s review under chapter 3] oftitle
`35, United States Code. pursuant to a
`petition filed under 35 U.S.C. 311, as
`amended, within three months after: (1)
`Receiving a preiiniinary response to the
`petition under 35 U.S.C. 313, as
`amended; or (2) if no such preliminary
`response is filed, the last date on which
`such response may be filed. 35 U.S.C.
`314{c], as amended, provides that the
`Director will notify the petitioner and
`patent owner. in writing. of the
`Director's determination under 35
`U.S.C. 314(3). as amended, and make
`the notice available to the pubiic as
`soon as is practicable. 35 U.S.C. 314[cl,
`as amended, also provides that the
`notice Will include the date on which
`the review will commence. 35 U.S.C.
`
`314(d], as amended, provides that the
`determination by the Director whether
`to institute an inter partes review under
`35 U.S.C. 314. as amended. will be final
`
`and nonappealable.
`Section 6[a] of the AIA amends 35
`U.S.C. 315. entitled "Relation to other
`proceedings or actions." As amended.
`35 U.S.C. 315[a][1] provides that an
`inter partes review may not be instituted
`if, before the date on which the petition
`for review is filed, the petitioner or real
`party-in-interest had filed a civil action
`challenging the validity ofa claim of the
`patent. As amended, 35 U.S.C. 315[a][2]
`provides for an automatic stay of a civil
`action brought by the petitioner or real
`party—in—interest challenging the validity
`of a claim of the patent and filed on or
`after the date on which the petition for
`inter pnrtes review was filed. until
`certain specified conditions are met. 35
`U.S.C. 315[a][3], as amended, provides
`that a counterclaim challenging the
`validity of a claim of a patent does not
`constitute a civil action challenging the
`validity of a claim of a patent for
`
`p.1046-5
`
`p.1046-5
`
`

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`48707
`Federal Register/Vol. 77. No. 157/ Tuesday, August 14, 2012/Ruies and Regulations
`
`reply to the patent owner’s response and
`any opposition to the motion to amend.
`Parties may request adjustments to the
`Scheduling Order at the initial
`conference cail.
`Comment 86: One comment suggested
`that the rules should expressly provide
`for the petitioner’s right to present new
`evidence in an opposition to an
`amendment. and the patent owner's
`right to file a reply to petitioners
`opposition to an amendment.
`Response: Section 42.23 provides for
`oppositions and replies. As noted in the
`Office Patent Trial Practice Guide
`(Section H]. a petitioner will be afforded
`an opportunity to respond fuliy to an
`amendment. The time for filing an
`opposition generally will be set in a
`Scheduling Order. No authorization is
`needed to file an opposition to an
`amendment. Petitioners may
`supplement evidence submitted with
`their petition to respond to new issues
`arising from proposed substitute claims.
`This includes the submission of new
`expert declarations that are directed to
`the proposed substitute claims.
`Additionally. {$42.23 provides that
`oppositions and replies must comply
`with the content requirements for
`motions. and a reply may only respond
`to arguments raised in the
`corresponding opposition. Section I of
`the Office Patent Trial Practice Guide
`also provides that a reply that raises a
`new issue or belatedly presents
`evidence will not be considered.
`
`Multiple Proceedings and Ioinder
`42.122 (Hid 42.222}
`Comment 87: One comment asked for
`clarification as to what effect
`
`consolidating proceedings. for example.
`two post-grant review proceedings,
`would have on the total number of post-
`grant reviews allowed in a given year.
`Response: Where multiple instituted
`proceedings are consoiidated, each
`proceeding would be counted towards
`any limit that might be established as
`each is a separately instituted
`proceeding that is thereafter
`consolidated into a single proceeding.
`Comment 88: One comment requested
`clarification on the timing for requesting
`joinder of parties or repiacement of a
`consenting petitioner, and suggested
`that the Office permit joinder and
`replacement until the time of a final
`written decision under appropriate
`circumstances. The comment further
`suggested a list of factors that the Office
`might consider in determining whether
`to permit voluntary joinder or
`replacement [e.g., the impact on the
`Scheduling Order]. Another comment
`requested guidance as to when joinder
`might occur.
`
`Response: loinder may be requested
`by filing a motion within one month of
`the date that the trial is instituted. When
`
`the Office determines whether to grant
`a motion for joinder. the Office will
`consider the particular facts of each case
`including how the consolidation of the
`revie