5/13/2015
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`Director's Forum: A Blog from USPTO's Leadership
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`Director's Forum: A
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`Blog from USPTO's
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`Leadership
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`Friday Mar 27, 2015
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`PTAB’S Quick—Fixes for AIA Rules Are
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`to Be Implemented Immediately
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`Blog by Under Secretary of Commerce for Intellectual Property
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`and Director of the USPTO Michelle K. Lee
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`In recent appearances before the Technology Policy Institute
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`and the IPO Education Foundation's PTO Day, I highlighted the
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`popularity (at least based upon number of filings) of our Patent
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`Trial and Appeal Board (PTAB) America Invents Act (AIA) trials
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`over the last three years. I also promised a series of rulemakings
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`later this year so we could seek public input on how we could
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`make these proceedings even better. We are well along in the
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`process of issuing our first set of rules and I want to give you a
`hint now of what is to come.
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`The USPTO issued rules and guidance for the new AIA
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`proceedings in 2012. Despite best efforts, we never envisioned
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`that our rules or guidance would be perfect at the outset, but
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`instead anticipated making refinements along the way. In June
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`2014 we asked for your input on how these proceedings were
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`working. I am pleased to tell you about the feedback we
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`collected and how that feedback is shaping the direction of our
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`[USPTO
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`[trademarks
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`[patents
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`[copyright
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`Lie
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`[America Invents Act
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`Comments
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`USPTO Blog
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`AIA trials going fon/vard.
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`In response to our request for input, we received 37 written
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`http:/Iwww . uspto.gov/bl og/di rector/enlry/ptab_s_qui ck_fixes_for
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`WESTERNGECO Exhibit 2039, pg. 1
`PGS v. WESTERNGECO
`IPR2014-01478
`
`

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`5/13/2015
`
`Director's Forum: A Blog from USPTO's Leadership
`
`You can receive the Director's Forum
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`LVJSC”tl°" Cent“
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`comments. Members of the Board have carefully reviewed your
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`thoughtful comments about ways that we can improve the AIA
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`proceedings. To implement some of the changes spurred by
`your input we have devised a three—part ro||—out plan.
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`This spring we plan to issue a first rule package containing what
`we call "quick fixes"—changes of simple scope that will
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`immediately improve the trial proceedings. Later this summer,
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`we will issue a second proposed—ru|e package containing more
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`involved changes to our Patent Trial and Appeal Board Trial
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`Rules that govern the conduct of the AIA trial proceedings. We
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`also plan to modify our Trial Practice Guide that provides
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`guidance to the public concerning various aspects of PTAB
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`practices in AIA trial proceedings. The Trial Practice Guide
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`advises the public on the general framework of the rules,
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`including the structure and times for taking action in AIA trial
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`proceedings. These modifications will clarify our trial operations
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`and by implementing the roll—out in stages, we aim to bring
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`improvements to our proceedings as quickly as possible.
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`As to our first ”quick fix" rule package, I wish to highlight some
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`of the improvements you can expect to see. Many of you
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`advised us that fifteen pages for a motion to amend that
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`includes a claim listing is not sufficient to explain adequately
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`why the amended claims are patentable. Similarly, others noted
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`that fifteen pages for a petitioner's reply brief is not a
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`commensurate number of pages to respond to a patent
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`owner's response. We have heard you, and we agree. One of
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`our quick-fix changes will nearly double the number of pages
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`for a motion to amend, granting up to twenty—five pages for the
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`motion along with the addition of a claims appendix (with a
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`commensurate amount of additional pages for the opposition
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`and reply briefing). Another change will nearly double the
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`number of pages for a petitioner's reply brief, granting up to
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`twenty—five pages. Notably, even before these two changes
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`appear in the first rule package,judges will begin implementing
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`them through scheduling orders effective immediately.
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`As to our second rule package of more involved changes, we
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`are considering proposing a number of other revisions to rules
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`including: further modifications to the motion to amend
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`process; adjustments to the evidence that can be provided in
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`the patent owner preliminary response; and clarification of the
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`claim construction standard as applied to expired patents in AIA
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`hltp:/Iwww . usptogov/bl og/di rector/entry/ptab_5_qui ck_fixes_for
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`2/5
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`WESTERNGECO Exhibit 2039, pg. 2
`PGS v. WESTERNGECO
`IPR2014-01478
`
`

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`5/13/2015
`
`Director's Forum: A Blog from USPTO's Leadership
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`proceedings. We also are considering several other changes,
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`including adjustments to the scope of additional discovery, how
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`to handle multiple proceedings before the Office involving the
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`same patent, use of live testimony at oral hearings, and whether
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`the parties should be required to make a certification with their
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`filings similar to a Rule 11 certification in district court litigation.
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`Additionally, regarding motions to amend, we are
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`contemplating proposed changes to emphasize that a motion
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`for a substitutionary amendment will always be allowed to
`come before the Board for consideration (i.e., be "entered"), and
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`for the amendment to result in the issuance ("patenting”) of
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`amended claims, a patent owner will not be required to make a
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`prior art representation as to the patentability of the narrowed
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`amended claims beyond the art of record before the Office. Of
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`course, the duty of candor and good faith requires the patent
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`owner to make of record any additional prior art material to
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`patentability known by the patent owner. These contemplated
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`changes would be intended to more noticeably limit the burden
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`on the patent owner, even though the patent owner is the party
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`moving for the change in the patent.
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`As with the revisions we are making via the first rule package,
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`the changes being considered in our second rule package are
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`the direct results of your feedback. And because we plan to
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`issue the changes in the second rule package in the form of a
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`proposed rule, you will have an additional opportunity to give
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`your feedback before we finalize them.
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`As to our Trial Practice Guide, we are contemplating proposing
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`even more updates and refinements. Although we are not
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`prepared to change the scheduling order to specify that live
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`testimony will automatically be allowed at a hearing, we will
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`address the subject of live testimony to bring greater clarity to
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`its usage. Specifically, because there has not yet been a current
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`practice of denying motions for live testimony and we do not
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`want to diminish the possibility of live testimony, we plan to
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`emphasize the availability of live testimony upon the grant of
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`any such motion for live testimony, except where not suitable.
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`Further, we understand that the existence of ample discovery to
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`establish the real-party-in-interest (RPI) of the petitioner has
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`been a concern. And we want to be sure that the availability of
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`appropriate RPI evidence does not pose a problem for patent
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`http:/lwww. uspto.gov/bl og/di rector/entry/ptab_s_qui ck_fixes_for
`
`WESTERNGECO Exhibit 2039, pg. 3
`PGS v. WESTERNGECO
`IPR2014-01478
`
`

`
`5/13/2015
`
`Director's Forum: A Blog from USPTO's Leadership
`
`owners. While the Board increasingly has been granting
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`motions for such discovery, we plan to update the Trial Practice
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`Guide to emphasize the importance of RPI discovery as to
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`determinations of standing and as to possible later estoppel
`consequences.
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`Lastly, to the extent that there has been concern that thejudges
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`participating in a decision to institute a trial may not be
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`completely objective in the trial phase, we are considering
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`developing a sing|e—judge pilot program for institution. Under
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`this pilot, a singlejudge would make the decision on whether
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`to institute a trial. Two newjudges would be added to the panel
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`only when and if a trial is instituted. In the interest of efficiency,
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`the firstjudge would remain on the panel; but in the interest of
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`having "fresh eyes," the two additional judges would not have
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`participated in the matter prior to institution. After running this
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`pilot for a select number of cases, we would study the results to
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`determine the approach to follow in the future.
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`In closing, we appreciate your input on our AIA trial
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`proceedings thus far. Our intention is to continue this iterative
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`approach of seeking your input after this round of changes has
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`been in effect for some time. We are committed to fulfilling our
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`Congressional mandate to provide a quick, inexpensive
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`alternative to district court litigation and improve patent quality
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`and to ensuring that the AIA trials are as effective and fair as
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`possible. And we can do so only by regularly monitoring and
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`correcting our course as usage of our AIA trials evolves in time.
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`Posted at 10:18AM Mar 27 2015 in ip | Comments|0|
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`hltp:/Iwww . usptogov/bl og/di rector/entry/ptab_5_qui ck_fixes_for
`
`WESTERNGECO Exhibit 2039, pg. 4
`PGS v. WESTERNGECO
`IPR2014-01478
`
`

`
`5/13/2015
`
`Director's Forum: A Blog from USPTO's Leadership
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`http:/Iwww . uspto.gov/bl og/di rector/entry/ptab_s_qui ck_fixes_for
`
`WESTERNGECO Exhibit 2039, pg. 5
`PGS v. WESTERNGECO
`IPR2014-01478