Elm Exhibit 2121
`Samsung, Micron, SK hynix v. Elm
`IPR2016-00387
`
`

`
`4861 2
`
`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Parts 1, 42 and 90
`[Docket No. F-'T0—P—2011—0082]
`BIN 0651—AC70
`
`Rules of Practice for Trials Before the
`Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and
`Appeal Board Decisions
`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
`provide for trials before the Patent Trial
`and Appeal Board (Board). This final
`rule provides a consolidated set of rules
`relating to Board trial practice for inter
`partes review, post-grant review, the
`transitional program for covered
`business method patents, and derivation
`proceedings. This final rule also
`provides a consolidated set of rules to
`implement the provisions of the AIA
`related to seeking judicial review of
`Board decisions.
`
`DATES: Effective Date: The changes in
`this final rule take effect on September
`16, 2012.
`FOR FURTHER INFORMATION CONTACT:
`
`Michael P. Tierney, Lead
`Administrative Patent Judge, Scott R.
`Boalick, Lead Administrative Patent
`Judge, Robert A. Clarke, Administrative
`Patent Judge, Joni Y. Chang,
`Administrative Patent Judge, Thomas L.
`Giannetti, Administrative Patent Judge,
`Board of Patent Appeals and
`interferences, by telephone at (571) 272-
`9797.
`SUPPLEMENTARY IN FORMATION: EXECUHVE
`
`Summary: Purpose: On September 16,
`2011, the AIA was enacted into law
`(Pub. L. 112-29, 125 Stat. 284 (2011)).
`The purpose ofthe AIA and this final
`ule is to establish a more efficient and
`streamlined patent system that will
`'mprove patent quality and limit
`unnecessary and counterproductive
`itigation costs. The preamble ofthis
`notice sets forth in detail the procedures
`by which the Board will conduct trial
`Jroceedings. The USPTO is engaged in
`a transparent process to create a timely,
`cost-effective alternative to litigation.
`Vioreover, the rulemaking process is
`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
`inal rule provides a consolidated set of
`
`rules relating to Board trial practice for
`inter partes review, post-grant review,
`the transitional program for covered
`business method patents, and derivation
`proceedings. See 35 U.S.C. 316(b), as
`amended, and 35 U.S.C. 326(b).
`Summary ofMajor Provisions:
`Consistent with sections 3, 6, 7, and 18
`ofthe AIA, this final rule sets forth: (1)
`The evidentiary standards, procedure,
`and default times for conducting trial
`proceedings; (2) the fees for requesting
`reviews; (3) the procedure for petition
`and motion practice; (4) the page limits
`for petitions, motions, oppositions, and
`replies; (5) the standards and
`procedures for discovery of relevant
`evidence, including the procedure for
`taking and compelling testimony; (6) the
`sanctions for abuse of discovery, abuse
`of process, or any other improper use of
`the proceeding; (7) the procedure for
`requesting oral hearings; (8) the
`procedure for requesting rehearing of
`decisions and filing appeals; (9) the
`procedure for requesting joinder; and
`(10) the procedure to make file records
`available to the public that include the
`procedures for motions to seal,
`protective orders for confidential
`information, and requests to treat
`settlement as business confidential
`information.
`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 13422 (Jan. 18,
`2007).
`Background: To implement the
`changes set forth in sections 3, 6, 7, and
`18 ofthe AIA that are related to
`administrative trials and judicial review
`of Board decisions, the Office published
`the following notices of proposed
`rulemaking: (1) Rules ofPractice for
`Trials before the Patent Trial and
`Appeal Board and Judicial 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 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 0651—AC70);
`(2) Changes to Implem ent Inter Partes
`Review Proceedings, 77 FR 7041 (Feb.
`10, 2012), to provide rules specific to
`inter partes review by adding a new
`subpart B to 37 CFR part 42 (RIN 0651-
`AC71); (3) Changes to Implement Post-
`Grant Review Proceedings, 77 FR 7060
`(Feb. 10, 2012), to provide rules specific
`
`to post-grant review by ad ding a new
`subpart C to 37 CFR part 42 (RIN 0651-
`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 Program
`for Covered Business Method Patents-
`Definition of Technological Invention,
`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); and (6) Changes to Implement
`Derivation Proceedings, 77 FR 7028
`(Feb. 10, 2012), to provide rules specific
`to derivation proceedings by adding a
`new subpart E to 37 CFR part 42 (RIN
`065 1—AC74).
`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) (“Practice
`Guide” or “Office Patent Trial Practice
`Guide”). The Office envisions
`publishing a revised Patent Trial
`Practice Guide for the final rules. The
`Office also hosted a series of public
`educational roadshows, across the
`country, regarding the proposed rules
`for the implementation of AIA.
`In response to the notices ofproposed
`rulemaking and the Office Patent Trial
`Practice Guide notice, the Office
`received 251 submissions offering
`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. The Office’s responses to
`the comments are provided in the 228
`separate responses based on the topics
`raised in the 251 comments in the
`
`Response to Comments section inéirla.
`In light of the comments, the O 'ce
`has made appropriate modifications to
`the proposed rules to provide clarity
`and to take into account the interests of
`the public, patent owners, patent
`challengers, and other interested parties,
`with the statutory requirements and
`considerations, such as the effect ofthe
`regulations on the economy, the
`
`Elm Exhibit 2121, Page 2
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`

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`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
`
`48613
`
`integrity of the patent system, the
`efficient administration of the Office,
`and the ability of the Office to complete
`the proceedings timely. The Office has
`decided to proceed with several
`separate final rules to implement the
`changes set forth in sections 3, 6, 7, and
`18 of the AIA that are related to
`administrative trials and judicial review
`of Board decisions. This final rule
`adopts the proposed changes, with
`modifications, set forth in the Rules of
`Practice for Trials before the Patent
`Trial and Appeal Board and Iudicial
`Review ofPatent Trial and Appeal
`Board Decisions [77 FR 6879].
`Differences Between the Fi.nal Rule and
`the Proposed Rule
`The major differences between the
`rules as adopted in this final rule and
`the ro osed rules are as follows:
`T e inal rule clarifies that the term
`“Board” also means “a Board member
`or employee acting with the authority of
`the Board” for petition decisions and
`interlocutory decisions, and it means “a
`panel ofthe Board” for final written
`decisions under 35 U.S.C. 135[d] and
`318[a), as amended, and 35 U.S.C.
`32a[aJ [§ 42.2).
`With respect to the mode of service,
`the final rule clarifies that service may
`be made electronically upon agreement
`ofthe parties, or otherwise, by EXPRESS
`MAIL® or means at least as fast and
`reliable as EXPRESS MAIL® [§ 42.6[e]].
`As to mandatory notices, the
`requirement for filing the notices as
`separate papers has been eliminated
`[§ 42,8[b]).
`With respect to recognizing counsel
`pro hac vice, the final rule specifies that
`the Board may recognize counsel pro
`hac vice during a proceeding upon a
`showing of good cause, subject to the
`condition that lead counsel be a
`registered practitioner and to any other
`conditions as the Board may impose
`[§ 42,10[c]]. The final rule further
`provides an example to clarify that,
`where the lead counsel is a registered
`practitioner, a motion for appearance,
`pro hac Vice, by counsel who is not a
`registered practitioner may be granted
`upon showing that counsel is an
`experienced litigating attorney and has
`an established familiarity with the
`subject matter at issue in the proceeding
`[§ 42,10[c]].
`In addition, the final rule clarifies that
`parties and individuals involved in the
`proceeding, as opposed to those merely
`“associated with the parties,” have a
`duty of candor and good faith to the
`Office during the course ofa proceeding
`[§ 42.1 1].
`As to citations of authority, the final
`rule eliminates the requirements for
`
`citing decisions to the United States
`Reports and the West Reporter System
`[§ 42.13]. Instead, the final rule
`expresses a preference for these sources.
`While this final rule adopts the
`proposed base fees for petitions
`challenging 20 claims or fewer, the final
`rule eliminates the fee escalation in
`block increments often claims by
`establishing flat fees per each
`challenged claim in excess of 20 claims
`for inter partes reviews, post-grant
`reviews, and covered business method
`patent reviews [§ 42.15[a] and [b]]. In a
`separate rulemaking in which the Office
`proposes to set and adjust fees pursuant
`to section 10 ofthe AIA, the Office is
`proposing a limited subsidization ofthe
`petition fees, and a staged fee structure,
`which would permit a refund of a
`portion ofthe petition fees in cases
`where a review is not instituted.
`This final rule also clarifies that the
`excess claims fees set forth in 35 U.S.C.
`41[a][2] are required where a motion to
`amend presents a certain number of
`additional claims [§ 42.15[e] and [f]].
`As to the proposed page limits, the
`final rule increases the proposed page
`limits by ten pages for petitions, patent
`owner preliminary responses, and
`patent owner responses [§ 4224],
`eliminates the requirement of presenting
`claim charts in double spacing
`[§ 42.B[a][2][iii)), and eliminates the
`requirement for a statement of material
`facts with respect to petitions and
`motions [§ 42.22]. These collective
`modifications will permit parties to
`have greater flexibility in presenting
`their cases and in responding to
`petitions and motions.
`As to discovery provisions, the final
`rule clarifies that the parties may agree
`to additional discovery between
`themselves without prior authorization
`from the Board [§ 42.51[b)[2]]. Likewise,
`the final rule additionally provides
`where the parties agree to mandatory
`discovery requiring initial disclosures,
`parties may automatically, upon the
`institution, take discovery of the
`information identified in the initial
`disclosures [§ 42.51[a][1]]. in this regard,
`the final rule also provides that where
`the parties fail to agree, a party may seek
`the mandatory discovery ofthe initial
`disclosures by motion [§ 42.51[a][2]].
`As to routine discovery, the final rule
`eliminates the requirement to explain
`the relevance ofthe information that is
`inconsistent with a position advanced
`by the party, and eliminates the
`noncumulative requirement [proposed
`§42.51[b][3]]. The final rule further
`limits the scope to relevant information,
`as opposed to any noncumulative
`information, that is inconsistent with a
`position advanced by the party during
`
`the proceeding [§ 42.51[b][1][iii],
`previously proposed §42.51[b][3]]. In
`that regard, the final rule also tailors the
`scope by stating expressly that the
`requirement does not make discoverable
`anything otherwise protected by legally
`recognized privileges, and the
`requirement only extends to inventors,
`corporate officers, and persons involved
`in the preparation or filing ofthe
`documents [§ 42.51[b][1][iii]]. The final
`rule further clarifies that the party must
`serve, rather than file, the relevant
`information [§ 42.51[b][1][iii]].
`Additionally, the final rule provides
`the parties the flexibility to agree on the
`service of exhibits [§ 42.51[b][1][i]]. The
`final rule also provides a new provision
`for production of documents
`[§ 42.51[c]].
`As to the taking oftestimony, the final
`rule permits parties to agree, without
`prior authorization ofthe Board, to
`video recording testimony [§ 42.53[a]],
`and taking uncompelled deposition
`testimony outside the United States
`[§ 42.53[b)[3]]. The final rule provides
`the default time limits for direct
`examination, cross—examination, and
`redirect examination for compelled
`deposition testimony, as well as cross-
`examination, redirect examination, and
`re-cross examination for uncompelled
`direct deposition testimony [§ 42.53[c]].
`In the case of direct deposition
`testimony, the final rule clarifies that if
`there is no conference with the Board,
`the party seeking the direct testimony
`must serve the required information and
`documents at least ten days prior to the
`deposition [§ 42,53[d][3]]. The final rule
`provides a new provision for an
`additional party seeking to take direct
`testimony of a third party witness
`[§ 42.53[b][5][iv]]. As to admissibility of
`evidence, the final rule eliminates the
`provision for motions in limine
`[proposed §42.64[d]].
`As to protective orders governing the
`exchange and submission of
`confidential information, the final rule
`clarifies that either the petitioner or
`patent owner may file a motion to seal
`containing a proposed protective order,
`such as the default protective order set
`forth in the Office Patent Trial Practice
`Guide [§ 42.54[a]]. Similarly, the final
`rule clarifies that confidential
`information in a petition may be
`accessed by the patent owner prior to
`the institution by: [1] Agreeing to the
`terms ofthe protective order requested
`by the petitioner, [2] agreeing to the
`terms of a protective order that the
`parties file jointly, or (3) obtaining entry
`of a protective order by the Board
`[§ 42.55].
`Regarding decisions by the Board, the
`final rule clarifies that while decisions
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`48614
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`on whether to institute a trial [including
`decisions not to institute a trial and
`decisions to institute a trial based on
`one or some of the grounds of
`unpatentability asserted in the petition]
`are final and nonappealable to the
`Federal courts, a party may request a
`rehearing before the Board [§§ 42.71[c]
`and [d]). The final rule also clarifies that
`a judgment includes a final written
`decision by the Board, or a termination
`of a proceeding [§ 42.2]. Additionally,
`the final clarifies that a judgment,
`except in the case of a termination,
`disposes all issues that were, or by
`motion reasonably could have been,
`raised and decided [§ 42.73[a)].
`As to the estoppel provisions, the
`final rule clarifies that a petitioner who
`has not settled, or the real party in
`interest or privy of such petitioner, is
`estopped in the Office from requesting
`or maintaining a proceeding with
`respect to a claim for which it has
`obtained a final written decision on
`patentability in an inter partes review,
`post—grant review, or a covered business
`method patent review on any ground
`that the petitioner raised or reasonably
`could have raised during the trial
`[§ 42.73[d][1)). Further, the final rule
`tailors the provisions to provide that a
`patent applicant or patent owner whose
`claim is canceled is precluded from
`taking action inconsistent with the
`adverse judgment, including obtaining
`in any patent: [1] A claim that is not
`patentably distinct from the finally
`refused or cancelled claim; and [2] an
`amendment of a specification or
`drawing that was denied during the trial
`[§ 42.73[d][3)). In this regard, the final
`rule also eliminates the provision
`precluding obtaining a patent for a
`claim that could have been filed
`[proposed §42.73[d][3)[ii]].
`Discussion of Relevant Provisions of
`the AIA:
`This final rule refers to the rules in
`subparts B through E of part 42 set forth
`in other final rules [RIN 0651—AC71,
`RIN 0Eu51—AC74, and RIN 0651—AC75].
`Moreover, rather than repeating the
`statutory provisions set forth in the AIA
`for the implementation ofinterpartes
`review, post—grant review, transitional
`program covered business method
`patents, and derivation that are
`provided in the other final rules, the
`instant final rule only summarizes the
`provisions related to the Board and
`judicial review of Board decisions that
`are not provided in the other final rules
`and provides the general framework for
`conducting trials.
`Patent Trial and Appeal Board
`Section 7 ofthe AIA amends 35
`U.S.C. 6 and provides for the
`
`constitution and duties ofthe Patent
`Trial and Appeal Board. 35 U.S.C. 6[a],
`as amended, provides that the Patent
`Trial and Appeal Board members will
`include the Director, Deputy Director,
`Commissioner for Patents,
`Commissioner for Trademarks, and
`administrative patentjudges. 35 U.S.C.
`6(a), as amended, further provides that
`“administrative patent judges shall be
`persons ofcompetent legal knowledge
`and scientific ability and are appointed
`by the Secretary, in consultation with
`the Director.” 35 U.S.C. 6[b], as
`amended, specifies that the duties ofthe
`Patent Trial and Appeal Board are to: [1]
`Review adverse decisions of examiners
`in patent applications; [2] review
`appeals of reexaminations pursuant to
`35 U.S.C. 134[b]; [3] conduct derivation
`proceedings pursuant to 35 U.S.C. 135,
`as amended; and [4] conduct inter
`partes reviews and post—grant reviews
`pursuant to chapters 31 and 32 of title
`35, United States Code. Further, section
`7 of the AIA amends 35 U.S.C. 6 by
`adding paragraphs [c] and [d]. New
`paragraph [c] of 35 U.S.C. 6 provides
`that each appeal, derivation proceeding,
`post—grant review including covered
`business method patent review, and
`inter partes review shall be heard by at
`least three members of the Board, who
`shall be designated by the Director.
`Iudicial Review of Patent Trial and
`Appeal Board Decisions
`The AIA amends title 35, United
`States Code, to provide for certain
`changes to the provisions for judicial
`review of Board decisions, such as
`amending 35 U.S.C. 134, 141, 145, 146,
`and 306 to change the Board’s name to
`“Patent Trial and Appeal Board” and to
`provide for judicial review ofthe final
`decisions ofthe Board in inter partes
`reviews, post—grant reviews, covered
`business method patent reviews, and
`derivation proceedings. The AIA also
`revises the provisions related to filing
`an appeal or commencing a civil action
`in interferences under 35 U.S.C. 141 or
`146, respectively.
`In particular, section 3[j] of the AIA
`eliminates references to interferences.
`Section 3[j][1) of the AIA amends each
`of 35 U.S.C. 145 and 146 by striking the
`phrase “Board of Patent Appeals and
`Interferences” each place it appears and
`inserting “Patent Trial and Appeal
`Board.” Section 3[j][2][A] ofthe AIA
`amends 35 U.S.C. 146 by: [i] striking
`“an interference” and inserting “a
`derivation proceeding”; and [ii] striking
`“the interference” and inserting “the
`derivation proceeding.” Section 3[j][3)
`ofthe AIA amends the section heading
`for 35 U.S.C. 134 to read as follows:
`Ҥ 134. Appeal to the Patent Trial and
`
`Appeal Board.” Section 3[j][4] ofthe
`AIA amends the section heading for 35
`U.S.C. 146 to read as follows: Ҥ 146.
`Civil action in case of derivation
`proceeding.” Section 3[j][6) ofthe AIA
`amends the item relating to 35 U.S.C.
`146 in the table of sections for chapter
`13 oftitle 35, United States Code, to
`read as follows: “146. Civil action in
`case of derivation proceeding.”
`Section 6[f][3][C] ofthe AIA provides
`that the authorization to appeal or have
`remedy from derivation proceedings in
`35 U.S.C. 141[d] and 35 U.S.C. 146, as
`amended, and the jurisdiction to
`entertain appeals from derivation
`proceedings under 28 U.S.C.
`1295[a][4][A], as amended, shall be
`deemed to extend to any final decision
`in an interference that is commenced
`before the effective date [the date that is
`one year after the enactment date] and
`that is not dismissed pursuant to section
`6(f][3][A] ofthe AIA.
`Section 6[h][2)[A] of the AIA amends
`35 U.S.C. 306 by striking “145” and
`inserting “144.”
`Section 7[c][1] ofthe AIA amends 35
`U.S.C. 141, entitled “Appeal to Court of
`Appeals for the Federal Circuit.” 35
`U.S.C. 141[a], as amended, provides that
`an applicant who is dissatisfied with the
`final decision in an appeal to the Patent
`Trial and Appeal Board under 35 U.S.C.
`134[a] may appeal the Board’s decision
`to the United States Court of Appeals for
`the Federal Circuit. 35 U.S.C. 141[a], as
`amended, further provides that, by filing
`an appeal to the United States Court of
`Appeals for the Federal Circuit, the
`applicant waives his or her right to
`proceed under 35 U.S.C. 145.
`Section 7[c][1] ofthe AIA amends 35
`U.S.C. 141[b] to make clear that a patent
`owner who is dissatisfied with the final
`decision in an appeal ofa reexamination
`to the Patent Trial and Appeal Board
`under 35 U.S.C. 134[b] may appeal the
`Board’s decision only to the United
`States Court of Appeals for the Federal
`Circuit.
`Section 7[c][1] ofthe AIA amends 35
`U.S.C. 141[c] to provide that a party to
`an inter partes review or a post—grant
`review who is dissatisfied with the final
`written decision of the Patent Trial and
`Appeal Board under 35 U.S.C. 318[a], as
`amended, or 35 U.S.C. 328[a] may
`appeal the Board’s decision only to the
`United States Court of Appeals for the
`Federal Circuit.
`Section 7[c][1] ofthe AIA amends 35
`U.S.C. 141[d] to provide that a party to
`a derivation proceeding who is
`dissatisfied with the final decision of
`the Patent Trial and Appeal Board in the
`proceeding may appeal the decision to
`the United States Court of Appeals for
`the Federal Circuit, but such appeal
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`4861 5
`
`shall be dismissed if any adverse party
`to such derivation proceeding, within
`20 days after the appellant has filed
`notice ofappeal in accordance with 35
`U.S.C. 142, files notice with the Director
`that the party elects to have all further
`proceedings conducted as provided in
`35 U.S.C. 146, as amended. 35 U.S.C.
`141[d], as amended, also provides that
`if the appellant does not, within 30 days
`after the filing of such notice by the
`adverse party, file a civil action under
`35 U.S.C. 146, the Board’s decision shall
`govern the further proceedings in the
`case.
`Section 7[c][2) ofthe AIA amends 28
`U.S.C. 1295[a][4][A] to read as follows:
`[A] the Patent Trial and Appeal Board of
`the United States Patent and Trademark
`Office with respect to a patent application,
`derivation proceeding, reexamination, post-
`grant review, or inter partes review under
`title 35, at the instance of a party who
`exercised that party’s right to participate in
`the applicable proceeding before or appeal to
`the Board, except that an applicant or a party
`to a derivation proceeding may also have
`remedy by civil action pursuant to section
`145 or 146 oftitle 35; an appeal under this
`subparagraph of a decision of the Board wifii
`respect to an application or derivation
`proceeding shall waive the right of such
`applicant or party to proceed under section
`145 or 146 oftitle 35;
`Section 7[c][3] ofthe AIA amends 35
`U.S.C. 143 by striking the third sentence
`and inserting the following:
`In an ex parte case, the Director shall
`submit to the court in writing the grounds for
`the decision of the Patent and Trademark
`Office, addressing all of the issues raised in
`the appeal. The Director shall have the right
`to intervene in an appeal from a decision
`entered by the Patent Trial and Appeal Board
`in a derivation proceeding under section 135
`or in an inter partes or post-grant review
`under chapter 3 1 or 3 2..
`Section 7[c][3] ofthe AIA further
`amends 35 U.S.C. 143 by striking the
`last sentence.
`Section 7[e] ofthe AIA provides that
`the amendments made by section 7 of
`the AIA shall take effect upon the
`expiration of the one-year period
`beginning on the date of the enactment
`of the AIA and shall apply to
`proceedings commenced on or after that
`effective date, with the following
`exceptions. First, the extension of
`jurisdiction to the United States Court of
`Appeals for the Federal Circuit to
`entertain appeals of decisions of the
`Patent Trial and Appeal Board in
`reexaminations under the amendment
`made by section 7[c][2] shall be deemed
`to take effect on the date of the
`enactment ofthe AIA and shall extend
`to any decision ofthe Board of Patent
`Appeals and interferences with respect
`to a reexamination that is entered
`
`before, on, or after the date ofthe
`enactment of this Act. Second, the
`provisions of 35 U.S.C. 6, 134, and 141,
`in effect on the day before the effective
`date of the amendments made by
`section 7 ofthe AIA shall continue to
`apply to inter partes reexaminations
`requested under 35 U.S.C. 311 before
`such effective date. Third, the Patent
`Trial and Appeal Board may be deemed
`to be the Board of Patent Appeals and
`lnterferences for purposes of appeals of
`inter partes reexaminations requested
`under 35 U.S.C. 311 before the effective
`date of the amendments made by
`section 7 ofthe AIA. And finally, the
`Director’s right under the fourth
`sentence of 35 U.S.C. 143, as amended
`by section 7[c][3] of the AIA, to
`intervene in an appeal from a decision
`entered by the Patent Trial and Appeal
`Board shall be deemed to extend to inter
`portes reexaminations requested under
`35 U.S.C. 311 before the effective date
`ofthe amendments made by section 7 of
`the AIA.
`
`Section 9(a) of the AIA amends 35
`U.S.C. 32, 145, 145, 154[b][4][A], and
`293 by striking “United States District
`Court for the District of Columbia” each
`
`place that term appears and inserting
`“United States District Court for the
`Eastern District of Virginia.” Section
`9[b] ofthe AIA provides that
`amendments made by section 9 ofthe
`AIA shall take effect on the date ofthe
`enactment of this Act and shall apply to
`any civil action commenced on or after
`that date.
`
`Discussion of Specific Rules
`
`This final rule provides 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
`patents by adding a new part 42
`including a new subpart A to title 37 of
`the Code of Federal Regulations.
`Interference proceedings would not be
`covered by a new part 42 and the rules
`in part 41 governing contested cases and
`interferences would continue to remain
`
`in effect so as to not disrupt ongoing
`interference proceedings. Additionally,
`the final rule also provides a
`consolidated set of rules to implement
`the provisions ofthe AIA relating to
`filing appeals from Board decisions by
`adding a new part 90 to title 37 of Code
`of Federal Regulations.
`Title 37 ofthe Code of Federal
`Regulations, Parts 42 and 90, are added
`as follows:
`
`Part 42—Trial Practice Before the
`Patent Trial and Appeal Board
`General
`Section 42.1: Section 42.1 would set
`forth general policy considerations for
`part 42.
`Section 42.1[a] defines the scope of
`the rules.
`Section 42.1[b] provides a rule of
`construction for all the rules in part 42.
`The rule mandates that all the Board’s
`rules be construed to achieve the just,
`speedy, and inexpensive resolution of
`Board proceedings. This final rule
`reflects considerations identified in 35
`U.S.C. 316[b], as amended, and 35
`U.S.C. 326[b], which state that the
`Office is to take into account the
`integrity of the patent system, the
`efficient administration ofthe Office,
`and the ability ofthe Office to complete
`the proceedings timely in promulgating
`regulations.
`Section 42.1[c] requires that decorum
`be exercised in Board proceedings,
`including dealings with opposing
`parties. Board officials similarly would
`be expected to treat parties with
`courtesy and decorum.
`Section 42.1[d) provides that the
`default evidentiary standard for each
`issue in a Board proceeding is a
`preponderance ofthe evidence. The rule
`implements the statute, which directs
`that unpatentability issues must be
`proven by a preponderance ofthe
`evidence. 35 U.S.C. 316[e], as amended,
`and 35 U.S.C. 326[e). The rule is also
`consistent with 35 U.S.C. 135[b), as
`amended, which provides that the
`Director shall establish regulations
`requiring sufficient evidence to prove
`and rebut a claim of derivation. See
`
`Price v. Syrnsek, 988 F.2d 1187,1193
`(Fed. Cir. 1993).
`Section 42.2: Section 42.2 sets forth
`definitions for Board proceedings under
`part 42.
`The definition of affidavit provides
`that ajjfidavit means affidavits or
`declarations under § 1.68. The
`definition also provides that a transcript
`of an exparte deposition or a
`declaration under 28 U.S.C. 1746 may
`be used as an affidavit.
`The definition of Board would rename
`“the Board of Patent Appeals and
`lnterferences” to “the Patent Trial and
`Appeal Board.” The definition would
`also provide that Board means a panel
`ofthe Board or a member or employee
`acting with the authority of the Board,
`consistent with 35 U.S.C. 6[b], as
`amended. Further, for petition decisions
`and interlocutory decisions, Board
`means a Board member or employee
`acting with the authority of the Board.
`For final written decisions under 35
`
`Elm Exhibit 2121, Page 5
`
`

`
`48616
`
`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
`
`J.S.C. 135[d] and 318[a], as amended,
`and 35 U.S.C. 328[a], Board means a
`oanel ofthe Board.
`The definition of business day
`orovides that business day means a day
`other than a Saturday, Sunday, or
`7e deral holiday within the District of
`Columbia.
`The definition of confidential
`'nformation provides that confidential
`information means trade secret or other
`confidential research, development or
`commercial information. The definition
`'s consistent with Federal Rule of Civil
`3rocedure 2B[c][1][G], which provides
`‘or protective orders for trade secret or
`other confidential research,
`development, or commercial
`information.
`The definition of final provides that
`final means final for purposes ofjudicial
`review. The definition also provides
`that a decision is final only if it disposes
`of all necessary issues with regard to the
`party seeking judicial review, and does
`not indicate that further action is
`required.
`The definition of hearing makes it
`clear that a hearing is a consideration of
`the issues involved in the trial.
`The definition ofinvolved provides
`that involved means an application,
`patent, or claim that is the subject of the
`proceeding.
`The definition ofjudgment provides
`that judgment means a final written
`decision by the Board, or a termination
`ofa proceeding. The definition is
`consistent with the requirement under
`35 U.S.C. 318[a], as amended, and 35
`U.S.C. 328[a], as amended, that the
`Board issue final written decisions for
`reviews that are instituted and not
`dismissed. The definition is also
`consistent with 35 U.S.C. 135[d], as
`amended, which provides for final
`decisions ofthe Board in derivation
`proceedings.
`The definition of motion clarifies that
`motions are requests for remedies but
`that the term motion does not include
`petitions seeking to institute a trial.
`The definition of Office provides that
`Office means the United States Patent
`and Trademark Office.
`The definition of panel provides that
`a pane} is at least three members ofthe
`Board. The definition is consistent with
`35 U.S.C. 6[c], as amended, that each
`derivation proceeding, inter partes
`review, post-grant review, and covered
`business method patent review
`proceeding shall be heard by at least
`three members ofthe Board.
`
`The definition of party includes at
`least the petitioner and the patent
`owner, as well as any applicant or
`assignee in a deriv