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`
`U.S GOVERNMENT
`INFQRMj\flON
`CPO
`
`FEDERAL REGISTER
`
`Vol. 77
`No. 157
`
`Tuesday,
`
`August 14, 2012
`
`Part Ill
`
`Department of Commerce
`Patent and Trademark Office
`37 CFR Part 42
`Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents; Final Rule
`
`West-Ward Exhibit 1015
`IPR Final Rules
`Page 001
`
`

`

`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]
`
`RIN 0651-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(cid:173)
`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: Effective 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 Judge 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 §6(f)((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 16, 2012 (subpart D).
`FOR FURTHER INFORMATION CONTACT:
`Michael P. Tierney, Lead
`Administrative Patent Judge, Sally G.
`Lane, Administrative Patent Judge, Sally
`C. Medley, Administrative Patent Judge,
`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. 284 (2011)).
`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 of a patent; (2) the standards for
`showing of sufficient grounds to
`institute an inter partes review; (3) the
`standards for instituting an inter partes
`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
`of a patent; (2) the standards for
`showing of sufficient grounds to
`institute a post-grant review; (3) the
`standards for instituting a post-grant
`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 (6) the time periods for
`completing the review (subpart C of 3 7
`CFR part 42).
`Consistent with sections 6 and 18 of
`the AIA, this final rule further sets forth
`for transitional post-grant 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 13422 (Jan. 18,
`2007).
`Background: To implement sections 6
`and 18 of the AIA, the Office published
`the following notices of proposed
`rulemaking: (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 (Feb. 9, 2012), to
`provide a consolidated set of rules
`relating to Board trial practice for inter
`partes 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
`0651-AC70); (2) Changes to Implement
`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 3 7 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 adding
`a new subpart C to 3 7 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 3 7 CFR part 42 (RIN
`0651-AC73); (5) Transitional Program
`for Covered Business Method Patents(cid:173)
`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
`
`West-Ward Exhibit 1015
`IPR Final Rules
`Page 002
`
`

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`Federal Register/Vol. 77, No. 157 /Tuesday, August 14, 2012 /Rules and Regulations
`
`48681
`
`(Feb. 10, 2012), to provide rules specific
`to derivation proceedings by adding a
`new subpart E to 37 CFR part 42 (RIN
`0651-AC74).
`This final rule adopts the proposed
`rules, with modifications, set forth in
`the three notices of proposed
`rulemaking: Inter partes review
`proceedings (77 FR 7041), post-grant
`review proceedings (77 FR 7060), 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 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).
`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
`Patents-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
`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 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 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 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 of the 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 proposed rules include:
`The final rule clarifies that the one(cid:173)
`year period for completing an inter
`partes or post-grant review may be
`adjusted by the Board in the case of
`joinder (§§42.lOO(c) and 42.200(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 42.205(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® or by means at
`least as fast and reliable as EXPRESS
`MAIL®(§§ 42.105(b) and 42.205(b)).
`The time period for filing a patent
`owner preliminary response for inter
`partes, post-grant and covered business
`method patent reviews is extended from
`two months to three months
`(§§42.107(b) and 42.207(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(b)).
`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(§§ 42.121(a) and
`42.221(a)). The final rule provides that
`an additional motion to amend may be
`authorized during inter partes, post(cid:173)
`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 final 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 unpatentability, 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 42.221(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 partes,
`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 (§§ 42.122(b) 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 partes, post(cid:173)
`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
`
`West-Ward Exhibit 1015
`IPR Final Rules
`Page 003
`
`

`

`48682
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`Federal Register/Vol. 77, No. 157 /Tuesday, August 14, 2012 /Rules and Regulations
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`for which the trial has been instituted
`(§§ 42.123(a) 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 interests-of(cid:173)
`justice (§§ 42.123(b)-(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 of a 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)(l)(C) of the
`AIA (§ 42.304(b)).
`Discussion of Relevant Provisions of the
`AIA
`Inter Partes Review
`Section 6 of the AIA is entitled
`"POST-GRANT REVIEW
`PROCEEDINGS" (Pub. L. 112-29, 125
`Stat. 284, 299-305 (2011)). Section 6(a)
`of the AIA, entitled "INTER P ARTES
`REVIEW," amends chapter 31 of title 35,
`United States Code, also entitled
`"INTER P ARTES REVIEW." In
`particular, section 6(a) of the AIA
`amends 35 U.S.C. 311-318 and adds 35
`u.s.c. 319.
`Section 6(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
`of chapter 31 of title 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 partes review
`of the patent. As amended, 35 U.S.C.
`31 l(a) also provides that the Director
`will 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. 31 l(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 of prior art consisting
`of patents or printed publications. As
`amended, 35 U.S.C. 311(c) provides that
`a petition for inter partes 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
`partes review will be limited compared
`with post-grant review. The grounds for
`seeking inter partes 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 available
`for post-grant review include 35 U.S.C.
`101and112, 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 of patents 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) of 35 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(a) 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
`partes 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 partes 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. 314, entitled "Institution of inter
`partes review." 35 U.S.C. 314(a), as
`amended, provides that the Director
`may not authorize an inter partes 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 likelihood 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
`partes review under chapter 31 of title
`35, United States Code, pursuant to a
`petition filed under 35 U.S.C. 311, as
`amended, within three months after: (1)
`Receiving a preliminary 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(a), as amended, and make
`the notice available to the public as
`soon as is practicable. 35 U.S.C. 314(c),
`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)(l) 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 of a 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 partes 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
`
`West-Ward Exhibit 1015
`IPR Final Rules
`Page 004
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`
`48683
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`purposes of 35 U.S.C. 315(a), as
`amended.
`As amended, 35 U.S.C. 315(b)
`provides that an inter partes review may
`not be instituted if the petition
`requesting the proceeding is filed more
`than one year after the date on which
`the petitioner, real party-in-interest, or
`privy of the petitioner is served with a
`complaint alleging infringement of the
`patent. However, the time limitation set
`forth in 35 U.S.C. 315(b), as amended,
`does not apply to a request for joinder
`under 35 U.S.C. 315(c), as amended.
`As amended, 35 U.S.C. 315(c)
`provides that if the Director institutes an
`inter partes review, the Director may, in
`the Director's discretion, join as a party
`to that inter partes review any person
`who properly files a petition under 35
`U.S.C. 311, as amended, that the
`Director, after receiving a preliminary
`response under 35 U.S.C. 313, as
`amended, or the expiration of the time
`for filing such a response, determines
`that the petition warrants the institution
`of an inter partes review under 35
`U.S.C. 314, as amended.
`As amended, 35 U.S.C. 315(d)
`provides that, notwithstanding 35
`U.S.C. 135(a), as amended, 251, and
`252, and chapter 30 of title 35, United
`States Code, during the pendency of an
`inter partes review, if another
`proceeding or matter involving the
`patent is before the Office, the Director
`may determine the manner in which the
`inter partes review or other proceeding
`or matter may proceed, including
`providing for stay, transfer,
`consolidation, or termination of any
`such matter or proceeding.
`As amended, 35 U.S.C. 315(e)(1)
`provides that the petitioner in an inter
`partes review of a claim in a patent
`under chapter 31 of title 35, United
`States Code, that results in a final
`written decision under 35 U.S.C. 318(a),
`as amended, or the real party-in-interest
`or privy of the petitioner, may not
`request or maintain a proceeding before
`the Office with respect to that claim on
`any ground that the petitioner raised or
`reasonably could have raised during
`that inter partes review. 35 U.S.C.
`315(e)(2), as amended, provides for
`estoppel against an inter partes review
`petitioner, or the real party-in-interest or
`privy of the petitioner, in certain civil
`actions and certain other proceedings
`before the United States International
`Trade Commission if that inter partes
`review results in a final written decision
`under 35 U.S.C. 318(a), as amended.
`Section 6(a) of the AIA amends 35
`U.S.C. 316, entitled "Conduct of inter
`partes review." As amended, 35 U.S.C.
`316(a) provides that the Director will
`prescribe regulations: (1) Providing that
`
`the file of any proceeding under chapter
`31 of title 35, United States Code, will
`be made available to the public, except
`that any petition or document filed with
`the intent that it be sealed will, if
`accompanied by a motion to seal, be
`treated as sealed pending the outcome
`of the ruling on the motion; (2) setting
`forth the standards for the showing of
`sufficient grounds to institute a review
`under 35 U.S.C. 314(a), as amended; (3)
`establishing procedures for the
`submission of supplemental information
`after the petition is filed; (4) establishing
`and governing inter partes review under
`chapter 31 oftitle 35, United States
`Code, and the relationship of such
`review to other proceedings under title
`35, United States Code; (5) setting forth
`standards and procedures for discovery
`of relevant evidence, including that
`such discovery will be limited to: (A)
`The deposition of witnesses submitting
`affidavits or declarations, and (B) what
`is otherwise necessary in the interest of
`justice; (6) prescribing sanctions for
`abuse of discovery, abuse of process, or
`any other improper use of the
`proceeding, such as to harass or to cause
`unnecessary delay or an unnecessary
`increase in the cost of the proceeding;
`(7) providing for protective orders
`governing the exchange and submission
`of confidential information; (8)
`providing for the filing by the patent
`owner of a response to the petition
`under 35 U.S.C. 313, as amended, after
`an inter partes review has been
`instituted, and requiring that the patent
`owner file with such response, through
`affidavits or declarations, any additional
`factual evidence and expert opinions on
`which the patent owner relies in
`support of the response; (9) setting forth
`standards and procedures for allowing
`the patent owner to move to amend the
`patent under 35 U.S.C. 316(d), as
`amended, to cancel a challenged claim
`or propose a reasonable number of
`substitute claims, and ensure that any
`information submitted by the patent
`owner in support of any amendment
`entered under 35 U.S.C. 316(d), as
`amended, is made available to the
`public as part of the prosecution history
`of the patent; (10) providing either party
`with the right to an oral hearing as part
`of the proceeding; ( 11) requiring that the
`final determination in an inter partes
`review will be issued not later than one
`year after the date on which the Director
`notices the institution of a review under
`chapter 31 of title 35, United States
`Code, except that the Director may, for
`good cause shown, extend the one-year
`period by not more than six months,
`and may adjust the time periods in this
`paragraph in the case of joinder under
`
`35 U.S.C. 315(c), as amended; (12)
`setting a time period for requesting
`joinder under 35 U.S.C. 315(c), as
`amended; and (13) providing the
`petitioner with at least one opportunity
`to file written comments within a time
`period established by the: Director.
`As amended, 35 U.S.C. 316(b)
`provides that in prescribing regulations
`under 35 U.S.C. 316, as amended, the
`Director will consider the effect of any
`such regulation 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 instituted under
`chapter 31 of title 35, United States
`Code timely.
`As amended, 35 U.S.C. 316(c)
`provides that the Patent Trial and
`Appeal Board will, in accordance with
`35 U.S.C. 6, conduct each inter partes
`review instituted under chapter 31 of
`title 35, United States Code.
`As amended, 35 U.S.C. 316(d)(1)
`provides that during an inter partes
`review instituted under chapter 31 of
`title 35, United States Code, the patent
`owner may file one motion to amend the
`patent in one or more of the following
`ways: (A) Cancel any challenged patent
`claim; and (B) for each challenged
`claim, propose a reasonable number of
`substitute claims. As amended, 35
`U.S.C. 316(d)(2) provides that additional
`motions to amend may be permitted
`upon the joint request of the petitioner
`and the patent owner to advance
`materially the settlement of a
`proceeding under 35 U.S.C. 317, as
`amended, or as permitted by regulations
`prescribed by the Director. 35 U.S.C.
`316(d)(3), as amended, provides that an
`amendment under 35 U.S.C. 316(d), as
`amended, may not enlarge the scope of
`the claims of the patent or introduce
`new matter.
`As amended, 35 U.S.C. 316(e)
`provides that in an inter partes review
`instituted under chapter 31 of title 35,
`United States Code, the petitioner has
`the burden of proving a proposition of
`unpatentability by a preponderance of
`the evidence.
`Section 6(a) of the AIA amends 35
`U.S.C. 317, entitled "Settlement." 35
`U.S.C. 317(a), as amended, provides that
`an inter partes review instituted under
`chapter 31 of title 35, United States
`Code, will be terminated with respect to
`any petitioner upon the joint request of
`the petitioner and the patent owner,
`unless the Office has decided the merits
`of the proceeding before the request for
`termination is filed. 35 U.S.C. 317(a), as
`amended, also provides that if the inter
`partes review is terminated with respect
`to a petitioner under 35 U.S.C. 317, as
`amended, no estoppel under 35 U.S.C.
`
`West-Ward Exhibit 1015
`IPR Final Rules
`Page 005
`
`

`

`48684
`
`Federal Register /Vol. 77, No. 157 /Tuesday, August 14, 2012 /Rules and Regulations
`
`315(e), as amended, will attach to the
`petitioner, or to the real party-in-interest
`or privy of the petitioner, on the basis
`of that petitioner's institution of that
`inter partes review. As amended, 35
`U.S.C. 317(a) further provides that if no
`petitioner remains in the inter partes
`review, the Office may terminate the
`review or proceed to a final written
`decision under 35 U.S.C. 318(a), as
`amended.
`As amended, 35 U.S.C. 317(b)
`provides that any agreement or
`understanding between the patent
`owner and a petitioner, including any
`collateral agreeme11ts referred to in the
`agreement or understanding, made in
`connection with, or in contemplation of,
`the termination of an inter partes review
`under 35 U.S.C. 317, as amended, will
`be in writing and a true copy of such
`agreement or understanding will be
`fi